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Intellectual Property Law Section

Live Programs

The 2016 Copyright Law Conference

Thursday, May 12, 2016

Universal Hilton
555 Universal Hollywood Dr.
Universal City, CA 91608

Earn 6 Hours MCLE Credit

You can now REGISTER ONLINE for this program. Online registration will close on May 5, 2016.

You and other experienced copyright practitioners will enjoy a full day immersed in in-depth presentations on cutting-edge issues and recent developments in copyright law. The "Hollywood Circuit," litigants, and the United States Copyright Office have been busy, and the landscape of copyright law is changing. Join us for our full-day copyright conference to ensure you are up to date with the latest developments. We have an amazing line up of speakers--don't miss this program! For more information, see click here.

Save the Date! The 2016 IP and the Internet Conference

The 2016 IP and the Internet Conference will be held Tuesday September, 6, 2016 at Saleforce's auditorium in San Francisco.

This popular full-day conference returns with its traditional exploration of the nexus between IP law and technology.

Speakers will include former Facebook Chief Privacy Officer and California Attorney General candidate Chris Kelly; Joanne McNab of the Attorney General's Office; Clara Law School Professor, Eric Goldman, and many others.There will also be a very practical and detailed presentation on how to handle online copyright and trademark infringement on all of the major online platforms.

Of course, there will also be several opportunities for networking including a table-topic-style luncheon.

Get the date on your calendar now! Program details and registration info to follow.

Save the Date for the 41st Annual IP Institute
IP on the American Riviera

Hyatt Santa Barbara November 10-11, 2016
Hyatt Santa Barbara
1111 E. Cabrillo Blvd
Santa Barbara

The Annual IP Institute, "IP on the American Riviera," will be held at the beautiful Hyatt Santa Barbara with a welcome reception November 9.

The conference will cover a wide range of cutting-edge and compelling presentations on trademark, copyright, patent, entertainment, right of publicity, licensing, and internet law, as well as practical sessions and IP-specific ethics panels. The event will also feature the always popular Annual Vanguard Awards luncheon celebrating pioneers in our field in a festive atmosphere.

The program will feature speakers from leading law firms and companies, numerous networking and socializing opportunities, as well as options to experience some of the gorgeous local sites of Santa Barbara.

We hope to see you there! Watch your inboxes and our website for more information!

For questions, please contact IP Institute Program Chair Elizabeth J. Rest at elizabeth@crownllp.com.

Webinars

Webinar: Mediating Trade Secret Disputes: A Mediator's Perspective

Friday, May 6, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit.
Presented by the IP Litigation Interest Group.

REGISTER TODAY

Trade secret litigation often involves deep levels of distrust, heated emotional exchanges, suspicion, and anger on the part of parties and counsel. One source of the problem lies at the heart of a trade secret misappropriation claim: the allegation that a 'theft' has occurred, and each party's perception of the other party resulting from that allegation. The plaintiff alleges its property has been stolen by the defendant. If the plaintiff desires to avoid the time and expense of trial, the victim must now negotiate with the thief, adding insult to injury. The defendant, on the other hand, may express outrage at being accused of theft, and suspect the litigation is merely a "fishing expedition" by the plaintiff to uncover the defendant's own trade secrets.

The allegation of theft sets the parties on a difficult path from the very outset, which can affect the likelihood of reaching a settlement during the mediation session. How then can the parties overcome these issues and reach agreement during mediation? This webinar provides helpful tips for counsel, from knowing the definition of 'trade secret' in the relevant jurisdiction, communicating with opposing counsel and developing trust and cooperation if possible, to conducting thorough discovery and investigations the first time round, moderating use of expert reports and knowing when to "stop," all with the goal of assisting clients in successfully mediating trade secret disputes.

Moderator: Anne-Marie Dao
Speaker: Erica Bristol

Webinar: Gray Areas in the IP Law of Latin America

Wednesday, May 18, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit.
Presented by the International Interest Group and the Trademark Interest Group.

REGISTER TODAY

The goal of this webinar is to provide the audience with an overview of the intellectual property laws of several countries in Latin America emphasizing the differences with US trademark, patent, and copyright laws to help the audience get a better and deeper understanding of the challenges and obscure issues that arise when working with clients and companies doing business in the region.

The presentation will include a discussion of the relevant topics in trademark, copyright as well as other intellectual property issues showing the comparison between the rules and legislation in countries such as Argentina, Brazil, Chile, Colombia, and the Andean Region, Central America, and Mexico. Special attention will be drawn to topics like the Madrid Protocol and Agreement and its lack of popularity in Latin America; Patent Cooperation Treaty and its slow implementation in certain countries; and the particularities of copyright law in those countries. The webinar will also explain the general rules that govern the intellectual property treaties in the Andean region.

Moderator: David Tseng

Speaker: Mariana Paula Noli

Webinar: Campus to Commerce -- The Challenges of Licensing from Universities

Thursday, June 23, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit.
Presented by the Licensing Interest Group.

REGISTER TODAY

Colleges and universities are the source of some of the world's greatest innovations, but it can be difficult to transfer that ingenuity from the ivy-strewn walls of campus to a market that obeys a different set of rules. In this webinar, Kyle Welch, a Licensing Associate at the San Diego State University Technology Transfer Office, will discuss what is meant by the term "technology transfer." Then, he'll share some of the unique challenges and considerations faced when licensing from universities, including the regulatory scheme faced by non-profit institutions including the Bayh-Dole Act, the interests and internal hurdles of universities in licensing transactions, tips for overcoming obstacles and negotiating successful licenses with universities, and the ongoing role of licensing university IP in regional economic development.

Moderator: Teri Karobonik READ MORE

Speaker: Kyle Welch READ MORE

Webinar: Murky Waters - Navigating a Copyright Termination Case

Wednesday, June 29, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit in Legal Ethics
Presented by the Copyright Interest Group.

REGISTER TODAY

The unequal bargaining positions of first-time creators and publishers often results in poor deals for the creators, including the loss of the copyright in their works. Congress has twice tried to remedy this situation, first in the 1909 Copyright Act and then in the 1976 Act. This last effort, found in Sections 203 and 304 of the Act, called the "Termination Statutes," has had very mixed results.

In this webinar, copyright law professor and scholar Marc Greenberg unravels the complex legal history of these efforts, and explains why built in problems cause the current laws to often fail to live up to Congress' intent.

Attendees will:

  • Learn the backstory of creators "second bite at the apple"
  • Explore best practices in handling termination issues
  • Discuss when to file a termination lawsuit

Examine benefits and challenges of filing a termination lawsuit

Moderator: : Francine D. Ward

Speaker: Marc Greenberg READ MORE

Interest Group Open Calls

Licensing Interest Group Open Call

Friday, May 13, 2016, 12 noon
To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.

Monthly “All Hands” Licensing IG conference call. Sean Hogle will lead part II of a discussion concerning online terms of use and service, with topics such as enforceability; choice of law; limitation of liability; and arbitration and class action waivers. We’ll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics.

Third-Party Programs

Copyright Office Announces Location Change for Section 512 Roundtable

The location of the section 512 public roundtable has been changed to a larger venue.

The California roundtable taking place on May 12 and 13 will now be held in courtroom 4 of the Ninth Circuit's James R. Browning Courthouse, 95 Seventh Street, San Francisco, California 94103. Sessions 1-4 will be held on Thursday, May 12 and sessions 5-7, as well as an additional closing session to hear from observers, will be held on Friday, May 13, 2016. The roundtable will run from 9:00 am to 5:00 pm on both days.

Please note that the courthouse can be busy. The Office therefore encourages prospective attendees to allow ample time to pass through security (we are advising that you may want to arrive an hour ahead of time). Seating for those wishing to observe the roundtable will be available on a first-come, first-served basis. 

Copyright Office Software-Enabled Consumer Products Study Roundtable

The Copyright Office will be conducting a public roundtable to gather input for its study on software-enabled consumer products in San Francisco on May 24, 2016. More information. Request to participate here.

Copyright Office Section 1201 Study Roundtable

The Copyright Office will be conducting a public roundtable to gather input for its study on Section 1201 of title 17, including the triennial rulemaking process, in San Francisco on May 25 & 26. More info here. Request to participate here.

News

Thank You for Being a Section Member - Here's 6 Hours MCLE in Legal Ethics!

We're very grateful for your membership in the Section. As a token of that, we're offering six hours of self-study MCLE credit in the area of Legal Ethics. The programs are posted in our Member's Only Area.

Simply watch the programs and read the accompanying materials, and keep track of having done so. You can report this to the State Bar when it's time to demonstrate your compliance with the MCLE requirements.

IP Section's 2016 Washington DC Delegation

The IP Section's 2016 Washington DC delegation has just returned from Washington DC after very informative meetings with the House, the Senate, the FTC, the DOJ Criminal Division, the Copyright Office, the Patent Office, the Trademark Office, and the White House. Look for the Delegation's full report in the Summer issue of New Matter. Bigger versions of the photos are posted on our Facebook page. Just click on them.

The IP Law Section's Washington DC Delegation at The  White House on April 20th, 2016. From left to right: Deborah Greaves, Rebecca Chen, Heather Antoine, Bennet Kelley, and Thomas Hassing (missing: Peter Bromaghim). (photo credit: The White House)

The IP Law Section's Washington DC Delegation meeting with Under Secretary of Commerce Michelle Lee at the USPTO on April 19th, 2016. From left to right: Thomas Hassing, Bennet Kelley, Rebecca Chen, Michelle Lee, Deborah Greaves, Heather Antoine, and Peter Bromaghim. (photo credit: USPTO)

Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice

The USPTO has published a Notice of Proposed Rulemaking entitled "Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice," Federal Register, Volume 81, No. 64, pp. 19296-19324 (available here)  There are numerous proposed changes, including that service of papers between parties be made via email, limiting document and admission requests to 75 each, an option to permit submission of witness testimony at trial in inter partes cases by affidavit or declaration, and permitting the Board to grant judgment for a defendant sua sponte when the plaintiff has not submitted evidence and its time for taking testimony has expired. As these are just a few of the proposed changes, practitioners are encouraged to review the complete list. The deadline for comments is June 3, 2016 and may submitted via email, TTABFRNotices@uspto.gov, or at the above website by following the "Submit a Formal Comment" link.

One Hour MCLE Is Available in the Latest Issue of New Matter

Self-Study CLE Tests One hour of MCLE is available in the current issue of New Matter, the State Bar IP Section's quarterly magazine.

For the Spring issue, you can earn credit for the article Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In? by William J. O'Brien. One hour of MCLE credit can be obtained by answering a set of True/False questions.

Log on to the webiste www.calbar.org/self-study for details. Watch for other MCLE credit available in future issues of New Matter.

Did You Know You Can Track Your CLE Through Your State Bar Profile?

Log into your profile and click on CLE Summary and Tracking Tool. This summary reflects all in person and online participatory classes completed through the State Bar of California.

Note: Future releases will allow you to manually add courses completed through other providers.

Even if this summary reflects you have completed the required 25 hours of MCLE within your compliance period, you must still formally report compliance by submitting your MCLE compliance declaration through My State Bar Profile.

The Trade Secret Treatise Is Available for Order

Members $115/Non-Members $155. Go HERE for a description, and HERE to order. You will need to click on Intellectual Property.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact newmatterjournal@yahoo.com

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLEDid you miss this program? It's available in our online catalog for CLE credit!

Recent Developments in Biosimilars

This program will discuss recent developments in biosimilar case law, including the Amgen v. Sandoz and the Janssen Biotech v. Celltrion cases, which discuss the correct statutory construction of the ACA's Biologics Price Competition and Innovation Act. The program will also include a discussion of the FDA's draft guidance regarding naming biosimilars, as well as the institution of a recent IPR, and the resulting implications for patents on biosimilars.

1 hour participatory MCLE credit
More Information 

For other Intellectual Property Law Section programs, see www.calbar.org/online-cle and select Intellectual Property Law Section.

Contact Us

We invite you to contact a member of the Executive Committee, or an Interest Group Officer. The IP Section has Interest Groups on:

The Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105
415-538-2375
IP@calbar.ca.gov