Inevitable Disclosures
August 15, 2016


Live Programs

Register Now! The 2016 IP and the Internet Conference

2016 IP and the Internet Conference imageTuesday, September 6, 2016
101 Spear Street
San Francisco, CA 94105

Earn 5.75 hours MCLE credit


Program Schedule | Essential Info | Printable Brochure | Mail/Fax Reg. Form

Join us for a full-day conference to ensure you are up to date with the latest developments.

  • Keynote speaker: Richard Downing, Acting Deputy Assistant Attorney General, US Department of Justice
Highlights in the schedule include:
  • CDA Section 230 in the Age of Cyber Civil Rights, with Eric Goldman and Chris Kelly
  • Social Media Takedowns, with Lynne Graybeal, Beth Goldman, and Emily Burns
  • Internet Law Update with Ian Ballon
  • Privacy Like its 1999? Privacy Law Changes at Home and Abroad, with Francoise Gilbert and Joanne McNab
  • General Counsel Roundtable, with Greg Goekner and David Simon

And ... table topic discussions at lunch. MORE INFORMATION.

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

Join us at the 41st Annual IP Institute, “IP on the American Riviera,” which will be held November 10 - 11 at the beautiful Hyatt Santa Barbara, with a welcome reception on November 9th. 

Panel Highlight: Top 5 IP & Technology Concerns of In-House Counsel and How to Address Them. We welcome in-house counsel from Wikimedia Foundation, Twitter, Inc., and DreamWorks Animation SKG, Inc. to discuss recurrent and topical issues seen in an in-house legal practice and how such issues are typically addressed. The discussion will include a review of key transactional strategies and recent case law.  Our panelists will address the IP concerns that they have in their capacities as in-house counsel for well-known companies, particular IP issues that arise in their particular industries, and how they utilize outside counsel to assist with those issues. More Information.

THE AMERICAN RIVIERA is a registered trademark of Visit Santa Barbara.


Webinar: Determining Damages For Different IP Assertions Covering One Product – A Venn Diagrams Exercise

Tuesday, August 23, 2016, 12 noon - 1 p.m.

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


As the importance of intellectual property protections rise, multiple IP registrations are becoming commonplace for a single product. But, what is the best way to approach damages in situations where a combination of copyrights, trademarks, trade secrets, or patents may be at issue in a single case? The presentation evaluates the current law on apportionment, and discusses some practice pointers for developing damage and pleadings strategies in these types of cases involving multiple IP registrations.

Moderator: Sanjesh Sharma
Speakers: Jim W. Bergman
               Mieke K. Malmberg

Jim Bergman, is a Managing Director at Conway MacKenzie and heads the firm’s intellectual property litigation group. He received a bachelor of arts in economics and his MBA from the University of California at Irvine. Mr. Bergman specializes in patent litigation, has worked extensively on numerous high-profile patent cases, and has been published in industry recognized publications and quoted by the LA Times. Before joining Conway MacKenzie, Mr. Bergman worked for various law firms as a financial consultant on numerous intellectual property, commercial and bankruptcy litigation matters. Mr. Bergman’s prior experience also includes over a decade as an IT professional focusing on networking and internet technologies.

Mieke K. Malmberg is a Partner in Glaser Weil’s Intellectual Property group. She received her bachelor of science degree in Biochemistry and Cell Biology from U.C. San Diego and her J.D. from U.C. Hastings College of the Law. Ms. Malmberg has more than fifteen years of experience litigating and advising clients on patent, trademark, copyright and trade secret disputes throughout the United States, as well as Section 337 investigations before the International Trade Commission. She is an expert in handling patent litigation matters from early case evaluation through appeal.

Sanjesh Sharma is IP Counsel at Abbott Vision, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. She is the Chair of the Patent Interest Group for the State Bar of California’s IP Section.

Webinar: Patent Clearance Strategies in the Wake of the Halo & Stryker Decisions

Wednesday, October 26, 2016, 12 noon - 1 p.m.

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


This program will discuss the current state of case law on willfullness and enhanced damages, including a discussion of the Halo Elecs, Inc. v. Pulse Elecs, Inc. decision, the Stryker Corp. v. Zimmer, Inc., decision, and recent case law interpreting those decisions. The program will also address practical tips for practitioners in writing freedom to operate opinions or conducting patent clearance efforts in light of current case law.

Moderator: Sanjesh Sharma
Speaker: Sarah Sheldon Brooks

Sanjesh Sharma is IP Counsel at Abbott Medical Optics, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. Since 2013, she has served as Vice Chair of the Patent Interest Group for the State Bar of California’s IP Section.

Sarah Sheldon Brooks is a shareholder in Stradling’s intellectual property practice. Ms. Brooks specializes in litigating intellectual property disputes. Ms. Brooks has successfully tried cases in Federal Court, including obtaining a willful infringement jury verdict in 2013 for a client in the U.S. District Court for the Central District of California. Ms. Brooks was named a Southern California Rising Star by Super Lawyers for the fourth year in a row from 2013-2016.

Webinar: Copyright: Your Client Got a Book Deal, Now What?

Thursday, October 27, 2016, 12 noon - 1 p.m.

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


Over the last 20-years the publishing industry has gone from a highly lucrative industry to experiencing the biggest downturn ever. Why? The Internet. The digital age impacted book sales in such a way that it was sink or change—the industry changed. Like a Phoenix arising from the ashes, the book industry now reigns supreme. With a renewed sense of confidence comes power; power that may affect your author clients. Join a panel of industry professionals for a thought-provoking session on what every book attorney must know to effectively counsel their author clients. You’ll hear the perspective of a publishing lawyer, literary agent, book editor, and a bestselling lawyer/novelist.

 They will:

  1. Discuss how changes in the book industry legally affect your clients;
  2. Explore important contract provisions and how best to negotiate them;
  3. Identify best practices in counseling your author clients.

Moderator: Francine Ward
Faculty: Kimberley CameronGeorgia Hughes and D.P. Lyle.

Francine Ward is a business and intellectual property attorney with a focus on copyrights, trademarks, publishing, entertainment, and social media legal issues. A 1989 graduate of Georgetown University Law Center, Francine is admitted to practice in New York, California, and the District of Columbia. In addition, she received a 6-figure publishing deal from Random House for her first book, Esteemable Acts: 10 Actions for Building Real Self Esteem. Currently, Ward is working on her first crime novel.

Kimberley Cameron loves finding new voices. She was the co-founder of Knightsbridge Publishing Company with offices in New York and Los Angeles. In 1993 she became partners with Dorris Halsey of The Reece Halsey Agency, founded in 1957. She opened Reece Halsey North in 1995 and in 2009 the agency became Kimberley Cameron & Associates. She resides and works from Tiburon, California and France.

Georgia Hughes is editorial director at New World Library, where she acquires and edits nonfiction books in the areas of animals, spirituality, personal growth, sustainable business, mindfulness, health, and women’s issues. Before joining New World Library, Georgia worked as a bookseller (independent bookstores), at Harper San Francisco (now Harper One) and Prima Publishing, and as a freelance editor. New World Library’s list includes the Collected Works of Joseph Campbell, The Power of Now by Eckhart Tolle, and many other excellent books.

D.P. Lyle is the Macavity and Benjamin Franklin Silver Award winning and Edgar, Agatha, Anthony, Scribe, Silver Falchion, and USA Best Book Award nominated author of both non-fiction and fiction (the Samantha Cody, Dub Walker, and Jake Longly thriller series and the Royal Pains media tie-in series). Along with Jan Burke, he is the co-host of Crime and Science Radio. He has served as story consultant to many novelists and the screenwriters of shows such as Law & Order, CSI: Miami, Diagnosis Murder, Monk, Judging Amy, Peacemakers, Cold Case, House, Medium, Women’s Murder Club, 1-800-Missing, The Glades, and Pretty Little Liars.


Interest Group Open Calls

Licensing Interest Group Open Call

Friday, September 2, 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. We'll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics. Please note: Our monthly calls are the 2nd Friday of every month.


New Executive Committee Members

Congratulations to new Executive Committee members Heather Antoine, Alex Chan, Dana Todd Iketani, Bennet Kelley and David Murphy who will begin their appointed 3-year terms this September.

New Copyright Office General Counsel

Sarang (“Sy”) Damle has been promoted to General Counsel and Associate Register of Copyrights of the U.S. Copyright Office by Register of Copyrights Maria Pallante. Damle, who has served as Deputy General Counsel of the Copyright Office since January 2015, succeeds Jacqueline Charlesworth, who is stepping down after four years at the Copyright Office. Prior to joining the Copyright Office, Damle served as senior counsel at the Consumer Financial Protection Bureau and as an appellate litigator in the Department of Justice's Civil Division. He holds a J.D. from the University of Virginia School of Law and engineering and business degrees from the University of Pennsylvania.

The Office of the General Counsel manages the legal portfolio of the Copyright Office and assists the Register on legal interpretation of copyright law. The General Counsel liaises with other federal departments, including the Department of Justice, on litigation and other copyright matters. The General Counsel also oversees the formulation and promulgation of regulations and the adoption of the Copyright Office's legal positions on policy and practices.

State Records Copyright Issue Removed from Bill

Last month, we mentioned that the Judiciary committee of California's Assembly introduced a bill proposing legislation that would, among other things, allow California governmental entities to hold copyright in their works. The legislature recently amended the bill to remove the provisions granting copyright in state works. More information available here.

Writers Wanted for New Matter

Inquiries about writing for New Matter, please contact

MCLE Catalog

Featured CLE Program from Our Catalog!


Did you miss it? All programs from IP Protection & Social Media Issues in the Workplace now available On-Demand

Startups: Avoiding Common Pitfalls of Starting a Company

For entrepreneurs and their counsel. Built a better mousetrap? How do you protect your IP and Other assets? Come learn how to avoid the common legal mistakes entrepreneurs make when forming their companies, in this program featuring speakers from the IP and Business Law sections. What form of entity is best for you? How to get started? How do you raise funds and still protect your equity? How do you make certain no one will steal your ideas? Learn about these issues and more.

1.5 Participatory MCLE Credits
More Information

For other Intellectual Property Law Section programs, see 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:

< Or contact the Editors of Inevitable Disclosure, Barbara Friedman and Aurelia Schultz.