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Congratulations to the Recipients of the 2014 IP Vanguard Awards!

The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property. The IP Vanguard Awards will be presented during a special Awards Luncheon at the 2014 IP Institute, the flagship event of the Intellectual Property Law Section.

The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property. The IP Vanguard Awards will be presented during a special Awards Luncheon at the 2014 IP Institute, the flagship event of the Intellectual Property Law Section.

In-House

Dean Marks
Senior Vice President, Intellectual Property, Warner Bros. Entertainment Inc.

Private Practice/Outside Counsel

Andrew Bridges
Fenwick & West

http://www.fenwick.com/professionals/ProfessionalImages/AndrewBridges.jpg

Judicial

Honorable Paul S. Grewal
United States District Court,
Northern District of California

Academic/Public Policy

Diane Peters,
General Counsel
Creative Commons

Diane Peters

 

Upcoming Standing Committee Meetings and MCLE Programs

Other News

Upcoming MCLE Programs and Meetings

Webinar: Octane Fitness & Highmark -- The Supreme Court Eases the Standard for Recovering Attorney's Fees in Patent Cases

Tuesday, August 19, 2014, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Patent Interest Group

This program offers 1 hour participatory MCLE credit. You must register in advance in order to participate.

This program will discuss the highly anticipated Supreme Court cases--Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark, Inc. v. Allcare Health Management Systems, Inc.--which have eased the standard for recovering attorneys' fees in patent cases and which overruled Federal Circuit precedent in Brooks Furniture v. Dutailier Int'l. The program will also discuss recent district court cases interpreting Octane Fitness, including Kaneka Corporation v. Zhejiang Medicine Co., Ltd. et al. (C.D. Cal).

Speakers:

  • Sarah Sheldon Brooks is a Shareholder in Stradling Yocca Carlson & Rauth's Intellectual Property group. Ms. Brooks received her bachelor of science in Biology from Tufts University and worked as a laboratory research technician at the Children's Hospital Boston before attending law school at Tulane University. Ms. Brooks started her legal career at the intellectual property boutique of Fitzpatrick Cella Harper & Scinto in New York. Ms. Brooks is an experienced trial attorney and recently served as lead trial counsel in a patent infringement action on behalf of the patentee and secured a jury verdict of willful infringement against the competitor for its patent infringement and copyright infringement. In connection with this action, Ms. Brooks recently had the opportunity to submit briefing requesting attorneys' fees and citing Octane Fitness

  • Sanjesh Sharma is Intellectual Property Counsel at Abbott Medical Optics, where she manages intellectual property matters for the company's Refractive and Laser Cataract Equipment portfolios. Since 2013, Ms. Sharma has served as the Secretary of the Patent Interest Group for the State Bar of California's IP Section.

Trade Secrets Interest Group Teleconference

Thursday, August 21, 2014, 12 noon - 1 p.m.

Call in number: 855-520-7605. Passcode: 1211276419#

During the call, we will discuss some new trade secret and restrictive covenant cases.

We will also discuss the new trade secret treatise, potential topics for MCLE webinars, topical teleconferences, social/networking events, ideas and volunteers for articles for New Matter and other potential activities.  Participation in these calls is a great way to learn about the IG, get involved and steer it in the direction that serves your needs.

All IP Section members interested in getting involved or learning about our activities are welcome. You need not have already signed up, and there is no charge.

The call will be moderated by Robert Milligan, Chair of the Trade Secrets Interest Group. If you can’t make it but are interested in finding out more, please contact Robert at rmilligan@seyfarth.com.

The State Bar of California Annual Meeting

State Bar Annual Meeting, September 11-14, San DiegoThe State Bar of California 87th Annual Meeting
September 11-14, 2014
Grand Hyatt San Diego
1 Market Place
San Diego, California

Earn up to 18 hours of MCLE credit and legal specialization, including credit in all MCLE subfields.

  • Early Bird Pre-Registration
    & Final Hotel Registration Deadline: August 13, 2014
  • Pre-Registration Deadline: August 21, 2014
  • Two-Day Registrations Available!

The four-day meeting will showcase an education agenda consisting of 143 MCLE seminars covering a variety of substantive topics, legal technology, access to justice, UPL, attorney advertising, and other key areas of interest.

The IP Section is pleased to present the following programs:

  • Program 28: Intellectual Property and the First Amendment
  • Program 74: Current Developments in Trade Secret Law
  • Program 81: Characters: Intellectual Property and Other Protection Issues
  • Program 92: What You Always Wanted to Know about Patents, Trademarks, Copyrights and Trade Secrets
  • Program 122: Shattering Trademark Myths for Non-Intellectual Property Lawyers
  • Program 132: What to do When the Client Says “You Mean that’s a Protectable Intellectual Property Asset?”

See the full schedule at 2014 State Bar of California Annual Meeting.

Webinar: A View from a PTAB Judge: An Update on Best Practices

Wednesday, October 8, 2014, 11 a.m. - 12 noon

Presented by the Intellectual Property Section, Litigation Interest Group

This program offers 1 hour participatory MCLE Credit. You must register in advance in order to participate.

Post-grant proceedings are now an important venue for resolving patent disputes. Many programs get the perspective of litigating practitioners. Come hear what an active judge handling these cases has to say! With speaker Peter Chen, Administrative Patent Judge, USPTO and Robert Payne, Moderator.

Webinar: Negotiating the Supply Chain: Licensing and Other Contract Issues

Thursday, October 9, 2014, 12 noon - 1 p.m.

Presented by the Intellectual Property Section, Licensing Interest Group

This program offers 1 hour participatory MCLE Credit. You must register in advance in order to participate.

This program will cover the most heavily negotiated clauses in supply chain agreements, focusing on mixed hardware/software procurement. Topics include:

  • Licensing and new development clauses;
  • Warranties;
  • Indemnities;
  • Limitation of liability;
  • Open source

With speakers:

  • Josh Fisher represents start-up, small and mid-market businesses in transactional and corporate matters, with focus on complex supply-chain and intellectual property agreements. Prior to starting his solo practice in 2009, Josh co-founded a supply-chain negotiations group at Cisco, served as a Managing Attorney in Cisco's legal department, and was a Director of Legal Affairs at Discovery Communications, the producers of Discovery Channel and Animal Planet. Josh began his legal career as a corporate and securities attorney at the law firm of Wilmer, Cutler & Pickering (now WilmerHale). Josh is a graduate of Columbia University School of Law and holds an MS in Information Technology and Telecom from Johns Hopkins University.
  • John Pavolotsky's practice focuses on technology transactions and other intellectual property matters. Prior to joining Intel Corporation, John was Of Counsel in the Intellectual Property and Technology Group of Greenberg Traurig LLP. John is a graduate of the U.C. Davis School of Law and Haas (U.C. Berkeley) School of Business.
  • Ron S. Zollman is Assistant General Counsel at EMC Corporation; he handles all supply chain agreements for EMC, as well as trade compliance and technology agreements. Prior to EMC's purchase of Iomega Corporation, the global manufacturer behind Zip Drives, Ron was General Counsel and Secretary for Iomega. Ron graduated U.C. Hastings (cum laude) in 1990, clerked for a federal district court judge, and litigated for ten years (trying four jury trials) before going in-house. He was selected to be among the top in-house attorneys in San Diego by the San Diego Daily Transcript, and is chair of the licensing interest group for ACC (Association of Corporate Counsel) in San Diego.

Webinar: The Ethics of Securing Your Client Data - Locked Down!

Tuesday, October 21, 2014, 12 noon - 1 p.m.

Presented by the Copyright and Technology/Internet/Privacy Interest Groups

This program offers 1 hour participatory MCLE Credit including 1 hour Legal Ethics credit. You must register in advance in order to participate.

Lawyers have an ethical duty to be competent and to keep their client data confidential. It costs money to protect data and businesses frequently resist budgeting for security, even though an ounce of prevention is far less expensive than a pound of cure. Investigating and remediating data breaches is hideously expensive, not to mention the necessity of complying with state data breach notification laws. This session will cover:

  • How to protect copyrighted material in the digital world
  • Specific security incidents involving copyrighted material
  • How data breaches occur
  • How to prevent data breaches using a combination of technology, policies and training
  • Secure computing when you're on the road
  • Encryption
  • The new rules for strong passwords
  • Common sources of breaches: User Error, Technology Snafus, Insiders, Hackers and Hactivists

With speakers

  • Sharon D. Nelson, Esq., is the President of Sensei Enterprises, Inc., a digital forensics, information technology and information security firm in Fairfax, Virginia. Ms. Nelson graduated from Georgetown University Law Center and has been in private practice ever since, now concentrating exclusively in electronic evidence law. Ms. Nelson was the President of the Virginia State Bar June 2013-June 2014, is now the President of the Fairfax Law Foundation. She serves on the ABA's Cybersecurity Legal Task Force and on its Standing Committee on Technology and Information Systems. From 2012-2014, she served on the ABA's House of Delegates.
  • John W. Simek is VP of Sensei Enterprises, Inc., and is a nationally known testifying expert in the area of digital forensics. He holds a degree in engineering from the U.S. Merchant Marine Academy and an MBA in finance from Saint Joseph's University. After forming Sensei, he ended his 20+ year affiliation with Mobil Oil Corporation, where he served as a senior technologist designing and troubleshooting Mobil's networks throughout the western hemisphere. Mr. Simek has in-depth experience with network troubleshooting, hardware and software implementations, systems integration, and logistical and financial expertise in computer engineering designs and solutions.
  • Francine Ward, Moderator.

Licensing Interest Group Teleconference

Friday, September 12, 2014, 12 noon

Call-in number: (855) 520-7605 Conference Code: 1211276419#

Please note:  The monthly Licensing IG calls are now being held on the second Friday of every month at noon. The next meeting will be Friday, September 12th at noon with a "featured speaker" and a discussion of hot topics. There will be no meeting for August.

The Copyright Office Comes to California - Save the Date!

Link to The Copyright Office Comes to California pageSave the Date! The Copyright Office Comes to California program is set for Monday, October 6, 2014 at the Los Angeles Airport Marriott Hotel and Wednesday, October 8, 2014 at the Julia Morgan Ballroom in San Francisco.

This popular full-day conference returns with programming on the activities and priorities of the Copyright Office, useful advice for copyright practitioners, analysis of recent copyright litigation and discussions about the future of copyright law.  Speakers will include senior officials from the U.S. Copyright Office as well as other leading copyright experts.

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

IP Institute Save the Date!

Hyatt Regency, Link to IP Institute PageSave the Date for the 2014 Intellectual Property Institute and 6th Annual IP Vanguard Awards will be held November 6-7, 2014  at the Hyatt Regency Orange County (Disneyland) 11999 Harbor Blvd, Garden Grove, CA.

The 6th Annual IP Vanguard Award Luncheon will be held Friday November 7, 2014, 12 noon - 1 p.m. 

Other News

Hot News: Court of Appeals Rules Sherlock Holmes is Squarely in the Public Domain

By Sam Gunning, 3L, Benjamin N. Cardozo School of Law

On August 4, 2014, the Seventh Circuit Court of Appeals issued its decision in Klinger v. Conan Doyle Estate, Ltd, holding that the Doyle estate must pay 100% of the legal fees-- totaling $30 million--to Leslie Klinger. Klinger is an author and editor who rejected the demands of the Doyle estate for licensing fees on a Sherlock Holmes anthology that was composed of stories that were all written before 1923.

Klinger arranged to publish an anthology of Sherlock Holmes' stories. As the copyright had expired he did not believe he needed to obtain a license. The Doyle estate told Pegasus, the publisher, that it would have to obtain a $5,000 license from the estate to legally authorize the book. The estate made latent threats to sue, and informed Klinger that "if you do proceed to bring out (the sequel) unlicensed, do not expect to see it offered for sale by Amazon, Barnes and Noble, and similar retailers."

Klinger sued the estate instead of obtaining a license and on June 16, 2014, the Seventh Circuit Court of Appeals issued a declaratory judgment in favor of Klinger, holding that Klinger would not be infringing copyrights on fictional works "published by Doyle before 1923 by anthologizing stories written long after Doyle's death in 1930 that feature Holmes and other characters depicted in the pre-1923 fiction." In the latest ruling, issued on August 4, 2014, the estate was ordered to pay all of Klinger's legal fees. Posner's quite scathing opinion described the Doyle estate's requests for licenses as "extortion," and further suggests that the estate may be violating antitrust laws through their collusion with booksellers to cooperate with it in enforcing its "nonexistent copyright claims."

Approaching the case from an economic standpoint, Posner praises Klinger for bringing the suit, advocating that by "exposing the estate's unlawful business strategy, Klinger deserves a reward but asks only to break even." In contrast, a copyright holder would obtain damages by winning a suit, but if they lose they do not pay damages." However, the case will no doubt significantly affect the practices of the Doyle estate in the future

California Labor Commission Decision--Deals Between Artists and Producers Not Covered by the Record Contracts Exemption to the Talent Agencies Act

On August 6, 2014, the California Labor Commission issued its decision in Lindsey v. Marie holding that the recording contracts exemption from the California Talent Agencies Act ("TAA") does not apply to contracts between artists and producers. The case, which pitted Steve Lindsey, a songwriter, record producer, and recording artist, against Marie Music Group, LLC ("MMG"), Lindsey's former management company, may have widespread repercussions for managers and the music industry in general.

Bennett Kaufman, Lindsey's manager and an employee of MMG, procured two record production jobs for Lindsey during their management relationship. Lindsey contracted directly with the artists, but was paid from royalties arising out of the sale and distribution of recordings from the artists' record companies. The record companies were not parties to the agreements. The TAA requires that people be licensed "who engage in the occupation of procuring, offering, promising, or attempting to procure employment or engagements for an artist or artists". California Labor Code §1700.4(a). The Act, however, includes an exemption for "activities of procuring, offering, or promising to procure recording contracts for an artist." Id.

In short, managers are not allowed to procure jobs for their clients unless those jobs are recording contracts. MMG argued that since Lindsey was actually being paid by royalties generated from the artists' recording agreements, the jobs fell within the recording contracts exemption of the TAA, even though the agreements were not made directly with a recording company.

Lindsey argued that MMG's procurement of his production jobs was a violation of the TAA because the agreements were not "recording contracts" since the record companies were not a party to the contracts.

The Commission agreed with Lindsey, stating that the recording contracts exemption was implemented specifically so that managers could act as a liaison between a record company and an artist, not as a blanket exemption for any agreement related to a master recording that will ultimately be distributed by a record company. Citing Marathon Entertainment v. Blasi, the Commission held that the management agreement between Lindsey and MMG was void ab initio because MMG "engaged in substantial procurement activities that are inseparable from the lawful managerial services provided." Marathon gives discretion to judges to decide whether to sever invalid portions of management contracts or hold them entirely invalid based on whether the "central purpose of the contract is tainted with illegality." Marathon Entertainment v. Blasi (2008) 42 Cal.4th 974. Finding that the manager's violation of the TAA was substantial, rather than sever the unlawful clauses, the Commission voided the contract in its entirety, resulting in no royalties to the manager.

This decision may result in a dramatic change in how artists, producers, and record companies contract. It may compel record companies to become parties to producer/artist agreements or to hire producers directly for their recording artists.

Copyright Office Extends Period of Public Comment in Second Notice of Inquiry Regarding Music Licensing

Following stakeholder requests, the U.S. Copyright Office is extending the deadline for written comments on the current state of the music licensing marketplace, including the specific subjects of inquiry set forth in the Office's July 23, 2014 Notice of Inquiry. Comments are now due on or before September 12, 2014. For more information, including the comment submission form, please see www.copyright.gov/docs/musiclicensingstudy/.

Copyright Office Extends Period for Submission of Further Comments on Rights of "Making Available" and "Communication to the Public"

The Copyright Office has published a Federal Register notice extending the deadline for public comments that address topics listed in the Office's July 15, 2014 Request for Additional Comments on the rights of "making available" and "communication to the public." Comments are now due by 5:00 p.m. EDT on September 15, 2014. For more information, including the complete notice and the comment submission form, please see www.copyright.gov/docs/making_available/.

6 Hours of Self-Study CLE in the Specialty Areas -- Complimentary for Members of the IP Section!

As a 2014 benefit of Section membership, we are pleased to offer six hours of MCLE credit, offering credit in all of the MCLE subfields.

The Section thanks you for your membership!If you were purchasing these courses individually in our Online Catalog, they would cost $210 -- so that's your Section membership more than paid for, and then some!

Just watch these programs, and keep a record of having done so in the event you're audited for MCLE compliance.

You can access these programs and the accompanying written materials any time this year in the Members Only Area.

Elimination of Bias in the Legal Profession

  • Navigating Diversity
Detection and Prevention of Substance Abuse and Emotional Distress
  • Coping with the Unique Challenges of Legal Practice
Legal Ethics
  • Avoiding the State Bar Disciplinary System
  • Client Trust Accounting Fundamentals
  • Ethical Implications for Lawyers in Cyberspace and Social Media
  • Ethics and Civility: Want an Extension? Forget about It!

Did You Know You Can Beef Up Your Member Record on the State Bar's Website?

Were you aware of the feature on the State Bar's website that allows you to add a photo and otherwise expand your State Bar profile?

Using a secure link within My State Bar Profile, attorneys may add information to their public record to include area(s) of practice, any additional language(s) spoken, their law firm's website address and a photo.

To get started, log in to My State Bar Profile, and click on the “Expanded Profile” link.

Interested in Advertising in New Matter?

If you're interested in advertising in New Matter, please note our ad rates.

Eligible Advertisers:

Law Firms,
Court Reporting Services,
IP Search Services,
IP Insurance Services,
eDiscovery Service Companies,
Legal Research Companies,
Legal Staffing Companies
And any other legal service company.

Ad Size/ Issues 1 Issue 2 Issues 3 Issues 4 Issues
¼ Page $1,200 $2,300 $3,300 $4,000
½ Page $1,600 $3,000 $4,200 $5,000
Full Page $2,400 $4,500 $6,300 $7,500

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 Winter 2013 issue, you can earn credit for the article Top 10 Ethics Violations Resulting in Discipline by the USPTO: An Update. 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.

Now 50% Off! 2011 Supplement to Trade Secret Litigation and Protection in California (Second Edition)

The Trade Secret Treatise is now on sale at 50% off. IP Section members can purchase the Supplement and Treatise together for $55. Or you can get the Treatise for $45 and the Supplement for $10. Non members can get theTreatise and the Supplement for $75.

To take advantage of the special offer, use the Special Offer -- IP Treatise Order Form and return it to The IP Section, The State Bar of California, 180 Howard Street, San Francisco, CA 94105; or fax it to 415-538-2368.

 WRITERS WANTED for New Matter

New Matter invites you to write and submit original articles on current issues relating to intellectual property, such as reasoned opinion, practice tips, or  scholarly analysis.

New Matter is looking for articles between 1500-6000 words.  Please contact the Acquisitions Editor, Amanda Nye anye@lawyersatlargellc.com for more details.

For more information, please contact our editorial staff at newmatterjournal@yahoo.com.

Featured CLE Program from Our Catalog!

Online CLEListen to Intellectual Property Law Section programs over the internet for participatory MCLE credit. Choose from more than a hundred hours of IP-related programs, and hundreds of other official State Bar of California MCLE programs.

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

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

Cover Your App: Mobile App Privacy & COPPA Compliance Explained

Mobile app developers, and those who represent them, understand that privacy is important…but they also understand that privacy is a challenge. The labyrinth of privacy laws is confusing, and at both the state and federal levels, enforcement is getting more stringent. Apps may expose sensitive data, such as financial, health, or children's information, and it's hard for app developers to know where to begin. With speaker Cathy Gellis and Hannah Poteat, Moderator.

1 hour participatory MCLE credit; $35
More Information

Save Money with CEB

CEB Discount Program for Section MembersContinuing Education of the Bar, California (CEB) is extending some special discount offers to our section. As a member of the Intellectual Property Law Section, you're eligible for:

  • 10% off selected CEB print or online books
  • A rebate on your section dues that can be applied to the cost of a CEB Gold CLE Passport or a CLE program ticket

A complete list of the products eligible for a discount is available on a CEB web page accessible through our Members Only Area. Information about the section dues rebate program can be found on the CEB Web site.

Contact Us

Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105-1639
IP@calbar.ca.gov
415-538-2375
415-538-2368 fax