Inevitable Disclosures
December 15, 2015

Contents

Live Programs

Intellectual Property Protection and Social Media Issues in the Workplace!

When: January 19, 2016
Where: State Bar Offices, 180 Howard Street, San Francisco
Time: 8:30 a.m. - 5:30 p.m., Luncheon and Networking Reception Included MCLE Credits: 7.25 hours

A group of leading intellectual property and employment attorneys from private industry, public agencies, private law firms, and distinguished law schools will focus on the following topics and offer practical advice to attendees from both the business world and the legal profession:

  • Ownership and Clearance of I.P. in the Workplace
  • I.P. Issues You Didn't Think You Had
  • Keynote: Professor Mark Lemley, Director of the Stanford Program in Law, Science and Technology
  • Testimonials and Endorsements: How to Properly Involve Employees
  • "Work Made for Hire" Clauses: Independent Contractor or Statutory Employee Under California Law?
  • Privacy Issues in the Workplace and the Internet of Things
  • Addressing I.P. Theft in the Workplace

Register online here! For more details, see Intellectual Property Protection and Social Media Issues in the Workplace.

Thank you to our sponsors, Silicon Forensics, Seyfarth Shaw, and Practical Law.

Intellectual Property Law Section Mix and Mingle!

Please join members of the IP Law Section for a Networking Mix & Mingle on Thursday, February 4, 2016, at 6 p.m.!

The mixer will be held simultaneously at five locations around the state! If you are, have been, or are interested in being a member of the IP Section, come meet a broad array of diverse practitioners in a relaxed and inviting venue. IP Law Section Executive Committee members and Interest Group officers will be at each location to answer questions, provide information about the Section, or simply to chat.We will be providing appetizers and a limited number of drink tickets, so get there early!

The venues are as follows:

1. San Francisco (Palomino – 345 Spear Street)
2. San Diego (McGregor’s Grill & Ale House – 10475 San Diego Mission Road)
3. San Jose (TBD)
4. Santa Monica (TBD)
5. Century City (TBD)

Join us for drinks and snacks and meet some long-time and new colleagues!

Look for additional information and details on Twitter @CalbarIPsection, Facebook, as well as in future editions of Inevitable Disclosures.

Webinars

Webinar: Update on Canadian IP Legislation and Upcoming Changes

Wednesday, December 16, 2015, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit
Presented by the International Interest Group

REGISTER TODAY

Canada is undergoing significant change in its intellectual property laws in an effort to modernize Canadian legislation in order to participate in International Treaties such as the Patent Law Treaty and the Madrid Protocol. Keep abreast of the changes and hot topics in Canadian IP law with leading Canadian IP attorneys as they discuss current and proposed changes to Canadian trademark and patent practice, and how they affect foreign applicants.

Speakers:

  • Etienne De Villiersand is a partner at Dimock Stratton LLP. Etienne’s legal practice has focused on patent litigation and patent prosecution in the mechanical, electrical and high technology fields. He is a registered patent agent and trademark agent. Etienne focuses his patent practice on the electrical engineering and mechanical engineering fields. His patent drafting and prosecution experience covers medical devices, sensors, automation and manufacturing, mining and ore processing, wireless communication, device security and encryption, data compression and related technologies. He has prosecuted these applications in Canada, the US and Europe through foreign associates. Etienne has experience in patent litigation involving mining equipment, business methods, wireless networking and document imaging.

  • Kathleen Lemieux is a partner at Borden Ladner Gervais LLP. Based in Ottawa and fluently bilingual in both English and French, she practices in both languages, specializing in trademark prosecution, intellectual property litigation, and IP transactions. In particular, Kathleen assists clients with the development, administration and protection of intellectual property rights, with an emphasis on trademarks, copyright and licensing agreements. She has a wide range of experience in advising clients in trademark opposition and cancellation proceedings and in assisting with litigation involving intellectual property rights before the Federal Canadian Court. She also negotiates and advises clients on various transactions involving all types of intellectual property rights

Webinar: Growing Like a Weed: What do Cannabis, Trademarks, Ethics and Cash Have in Common?

Thursday, December 17, 2015, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit in Legal Ethics.
Presented by the Trademark Interest Group

REGISTER TODAY

The following topics will be covered:

  1. Current Status of Federal, State, and Local Marijuana Laws
  2. Trademarks: What Will (and Won’t) the PTO (and various state trademark offices) Allow When it Comes to Marijuana-related Trademarks?
  3. Discussion of the Recently-Issued Bar Association of San Francisco Opinion on Representation of  Medical Marijuana Enterprises in California
  4. Cash from Marijuana Clients: Manageable or Radioactive?

Moderator: Mary A. Harris

Speakers:

  • David Branfman, Branfman Law Group
  • Lance Rogers, Bremer Whyte Brown & O’Meara, LLP

Webinar: The Ethical Considerations of Playing in the Social Media Sandbox

Thursday, January 7, 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

Social networking is the hottest thing since email. It's fun, fast paced, interesting, and allows you to connect with friends, family, colleagues, and clients in an instant. For lawyers, it levels the advertising playing field. You can market your services, display your writing talent, and share knowledge in your practice area—all at a fraction of the cost of a big advertising campaign. But wait, there’s more! With all the benefits of social networking there are land mines to be aware of. Join the panel for an interesting and provocative session on what every California lawyer must know before stepping into the social media sandbox.

In this session you will:

  1. Identify California rules of ethics that are most impacted by social media;
  2. Explore relevant ethics opinions; and
  3. Examine strategies for side-stepping the land mines.

Speaker: Francine Ward.

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

Tuesday, January 12, 2016, 9 a.m. - 10:05 a.m.

This program offers 1 hour of participatory MCLE credit in Legal Ethics.
Presented by the Copyright and Technology/Internet/Privacy Interest Groups

REGISTER TODAY

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

Moderators:

  • Christopher Lockard is Corporate Counsel at the Clorox Company, and advises consumer brands on issues related to digital platforms, content and talent rights, branded entertainment, contests and sweepstakes and privacy issues. Mr. Lockard is the chair of the Copyright Interest Group of the State Bar of California’s Intellectual Property Law Section.

  • Francine Ward.

Speaker:

  • 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.

Webinar: What Works for Women at Work – Four Patterns Working Women Need to Know to Fight Gender Bias

Thursday, January 14, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

Join us for a dynamic presentation led by Professor Joan C. Williams, one of the nation’s most cited experts on women and work, about her latest book – What Works for Women at Work: Four Patterns Working Women Need To Know.

The presentation offers savvy advice, based on extensive research and interviews with 127 highly successful women, to help women navigate office politics and thrive in high-powered careers. Drawing on hundreds of published studies, Williams pinpoints the ways office politics are trickier for women than men, and even trickier for women of color, identifying four distinct patters of gender bias:

  • Women have to prove themselves over and over (“Prove-It-Again!”);
  • They must navigate a tightrope between being too masculine and too feminine (“Tightrope”);
  • Having children just compounds both problems (“Maternal Wall”); and
  • Gender bias against women often fuels conflicts among women (“Tug of War”).

This presentation provides specific strategies used by highly successful women at the top of their fields to navigate workplaces shaped by subtle bias. Williams offers strategies beneficial to a wide range of women, be they timid or assertive, white or a woman of color, juggling a family or single, 20 or 60 years old. The result is a researched-based "how-to" manual for any woman trying to figure out what concrete steps she can take to advance her career and cope with bias. Please join us for an engaging discussion about the challenges women face in today’s workplace, and learn about data-driven strategies that will help women succeed.

Speaker:

  • Professor Joan C. Williams Professor Joan C. Williams has played a central role in reshaping the conversation about women and work over the past quarter-century. According to The New York Times Magazine, Professor Williams has “something approaching rock star status.” She is a Distinguished Law Professor and Founding Director of the Center for WorkLife Law at University of California, Hastings. She has authored eight books and over 90 academic articles and book chapters, including “Deconstructing Gender” (1996), one of the most cited law review articles ever written. Her latest book, What Works for Women at Work: Four Patterns Working Women Need to Know (2014) offers savvy advice to help women navigate office politics and thrive in high-powered careers.

    Williams was awarded the American Bar Foundation’s Outstanding Scholar Award (2012), the Elizabeth Hurlock Beckman Award (2012), the ABA’s Margaret Brent Award for Women Lawyers of Achievement (2006), and the Gustavus Myers Outstanding Book Award for Unbending Gender: Why Family and Work Conflict and What to Do About It (Oxford University Press, 2000).

Webinar: Drafting IP Agreements: Best Practices from a Litigator's Perspective

Thursday, January 26, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

Much can be learned from contracts gone awry. In this webinar, you’ll have a chance to learn some best practices for drafting IP and technology licensing agreements that will help keep your clients out of the courtroom. Key topics will include:

  • License scope: what restrictions can be placed on the scope of an IP license and how to protect downstream or upstream partners.
  • Dispute resolution and other “boilerplate” clauses of consequence: how seemingly boilerplate terms, such as choice of law clauses, can substantively impact the enforcement of IP license agreements.
  • Exclusive dealing and related incentives: understanding the relevant market and how to structure exclusive dealing license agreements to minimize antitrust liability.

Speakers:

  • Eugene Mar is a partner with Farella Braun + Martel, LLP in San Francisco, where he represents clients in patent, copyright, trademark, trade secret, and licensing litigation. Mr. Mar also counsels clients on intellectual property protection and transactions. His clients range from Fortune 100 companies to emerging companies. He has repeatedly succeeded in obtaining complete verdicts in favor of his clients, including the entry of judgment in favor of the defendant post-Markman in multiple patent cases in the Eastern District of Texas. He was recognized by The Recorder as a Top 50 California Attorney in his first 10 years of practice in 2012. Mr. Mar chairs the Bar Association of San Francisco’s Intellectual Property Section and co-chairs the ABA Litigation Section's Intellectual Property Roundtable program. He received his J.D. from Harvard Law School, and his undergraduate degree from University of California, Berkeley.

  • Eric Olson is a senior associate in Farella’s San Francisco office, where his practice focuses on intellectual property litigation, including patent, copyright, trademark and trade dress litigation, as well as disputes concerning licenses and ownership of intellectual property. He also counsels clients on licensing intellectual property. His cases have involved biotechnology, WiFi, USB, Android software and other technologies relating to smartphones and tablet computers. He has represented clients in all aspects of arbitration and litigation, including Markman, summary judgment and trial. Mr. Olson received his J.D. from the University of California, Hastings College of the Law, where he was a staff editor of the Hastings Business Law Journal and admitted to the Order of the Coif and the Thurston Honor Society.

Webinar: EU/US Privacy Law: With the "Safe Harbor” Closed, What Next?

Tuesday, February 9, 2016, 12 noon - 1 p.m.

This program offers 1 hour of participatory MCLE credit.
Presented by the Licensing Interest and Technology, Internet & Privacy Interest Groups

REGISTER TODAY

When the Court of Justice of The European Union struck down the EU/US Privacy “Safe Harbor” they sent shockwaves through the US privacy community. Thousands of US companies affected by the decision were faced with the challenge of finding an alternative basis for sharing data between the EU and the US. In this webinar you’ll have a chance to learn about the Court of Justice of The European Union’s decision. You’ll also walk away with practical tips on how to structure your clients cross border data sharing in lieu of safe harbors.

Moderator:

  • Teri Karobonik is the Director of Communications of the Licensing Interest Group for the State Bar of California’s IP Section. 

Speaker:

  • Francoise Gilbert focuses her practice on U.S. and global data privacy and security in a wide variety of markets, including, among others, cloud computing, big data, connected devices, robots and other emerging technologies. Her clients include public or multinational entities, cloud service providers, big data analytics companies, connected device developers, B2C and B2B businesses, publishers, Internet stores, insurance companies, manufacturers, service providers, trade associations, non-profit organizations, software developers, and others.

    With more than 30 years of experience addressing cutting edge domestic and international computer, Internet and data protection issues, she brings a unique combination of practical business acumen, sharp legal skills, deep regulatory knowledge, and extensive experience of the information technology markets.

    Covering the entire privacy and security spectrum, she counsels clients on complex issues related to evaluating and strategically managing privacy, security, and e-business risks. She assists in the design of product and services to help meet the company’s objectives within the constraints of compliance requirements; the development of internal programs to help drive a culture of privacy across entire organizations; product development strategies aimed at meeting the privacy-by-design and security-be-design principles; the development and implementation of information privacy and security strategies and compliance programs; and addressing privacy and security in mergers and acquisitions, and other corporate and commercial transactions.

    A sought after speaker, Françoise Gilbert has been featured on numerous panels throughout the United States and internationally on privacy, security, cloud computing, connected objects, smart cities, robot law, risk management, outsourcing, information technology, and e-business law by industry groups, bar associations and trade associations.

    In addition, Ms. Gilbert is the author of the leading two-volume treatise "Global Privacy and Security Law" which covers in depth the privacy and data protection laws of 68 countries on all continents. She has also written numerous chapters in collective works and has published hundreds of articles in peer-reviewed publications, professional journals and magazines on privacy, security, emerging technologies, compliance, cybercrime, outsourcing, workplace privacy, information law, data governance, Internet law, ecommerce, children protection, and comparative law.

Interest Group Meetings

Licensing Interest Group Meeting

Friday, January 8, 2016, 12 noon

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.

To participate in the meeting, the dial-in number is 855-520-7605, passcode 1211276419#.

Entertainment and Sports Law Interest Group Meeting

Friday, January 15, 2016, 12 noon

Please join the Entertainment and Sports Law Interest Group for a member call on Friday, January 15, 2016, from 12 noon to 1 p.m. During the call we will have an open discussion about webinars that we are working on, topic and speaker ideas for future programs, and opportunities for members to get involved. All IP Section members are invited to participate. For more information about the call or the Entertainment and Sports Law Interest Group, contact Chair Sean Sullivan or Vice Chair David Murphy.

To participate in the meeting, the dial-in number is 855-520-7605 and the Conference Code is 1211276419#.

News

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 Fall issue, you can earn credit for the article Revisiting Section 2(a) Disparagement in Trademark Law: Does the Disparagement Test Make Sense and is the Provision Constitutional? by Samuel Berrin. 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
CLE

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

Tips for Effectively Searching the USPTO Database Using TESS

A multi-part series on TESS searching skills will be discussed.  The three forms of search options available, followed by an exploration of free-form searching, field operators, and truncation will be explained.

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:

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