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Inevitable Disclosures July 31, 2015

Live Programs

Intellectual Property in Entertainment and Media

IP in Entertainment and MediaJoin us at the IP in Entertainment & Media full day conference, Thursday, September 10, 2015, at the Hyatt Regency Century Plaza in Los Angeles. Panel highlight: Three Fights I Got Into Over and Over in 2015 #BrandingintheDigitalAge. Panelists from DreamWorks Animation SKG, Inc., Warner Bros. Entertainment Inc., and Kabam, Inc. will discuss three of the issues that most plague brand owners in today’s entertainment industry: (1) “What exactly am I getting?” Issues with identifying what you need when you walk in the door, and who you can get it from; (2) “But, that’s not how we used to do it.” A discussion of the tension between the old and new ways of marketing and risk analysis; and (3) “To enforce, or not to enforce?” Selective enforcement strategies, such as when dealing with user-generated content, fans, the internet, and social media.

You can now REGISTER ONLINE for this program. For the full schedule of events, see IP and Entertainment & Media .


Webinar: Export Controls and the In-House Counsel - What You Don’t Know Can Certainly Hurt Your Client

Wednesday August 5, 2015, 2015, 12 noon - 1 p.m.

Presented by the In-House Counsel Interest Group

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

Does your in-house client ever work with people outside the United States? Do they communicate, ship, or sell outside our borders? Did you know that certain intellectual property can’t be shared with non-US persons without first securing Government permission? Did you know that failure to secure those critical licenses could expose your clients to criminal charges, penalties and contractual sanctions? Join the In-House Interest Group to hear a presentation by Ms. Kathleen C. Little of Vinson and Elkins, as she provides a general overview of export controls. She will describe in clear terms the obligations of In-House counsel as they support their companies’ contracts in military, dual-use or commercial programs. Ms. Little will answer questions like, “When does an export occur, and when do I need a license? When and how will I encounter export issues on a day to day basis? Will I encounter issues, even if my company is only providing services, training and education? Who and what are the prohibited individuals and countries that my company cannot provide technical data without risking sanctions? What you don’t know can indeed hurt you and your client!

Speaker: Kathleen C. Little, Washington, DC. Ms. Little concentrates her practice in export controls and government contracts. She counsels on a wide variety of international issues, including compliance with the International Traffic in Arms Regulations (ITAR), the Export Administration Regulations (EAR), sanctions regulations administered by the Office of Foreign Assets Control (OFAC), and the Foreign Corrupt Practices Act (FCPA). A graduate of George Washington University Law School and The University of Maryland. Ms. Little brings thirty years of experience to the field of providing intellectual property to foreign persons or across borders.

Webinar: Trademark Application Challenges in Greater China

Tuesday, August 11, 2015, 12 noon - 1 p.m.

Presented by the Trademark Interest Group

This program offers 1 hour participatory MCLE credit and 1 hour legal specialization credit in Franchise and Distribution Law. You must register in advance in order to participate.

Chloe Lee will discuss the intricacies and importance of the “who, what, when and how” of trademark registration in China in view of changes in the law. Discussion will include contested procedures, and registration tips for Hong Kong, Macau, and Taiwan.

Moderator: Carole Barrett

Speaker: Chloe Lee is a partner at J. S. Gale & Co in Hong Kong and is the head of the IP group. Chloe has more than 20 years of experience in a wide spectrum of IP-related matters covering non-contentious, contentious, anti-counterfeiting, merchandising, portfolio management, licensing, franchising, and domain names in Asia and other parts of the world. Chloe advises clients on drafting IP-related contracts and has litigated for multi-national corporations including toy manufacturers, vehicle makers, retail chain stores, and fashion brand names.

Webinar: Depression, Mental Health, and Ethics: An Unspoken Stigma in Law: Causes, Prophylactics, and Cures?

Wednesday, August 12, 2015, 12 noon - 1 p.m.

Presented by the In-House Counsel Interest Group

This program offers 1 hour participatory MCLE credit, includeing .5 hours in Legal Ethics and .5 hours in Competency Issues. You must register in advance in order to participate.

Sex, drugs, and alcohol are often merely the symptoms, and not the underlying causes of career killing, self-destructive behavior by intelligent, trained legal professionals. In this unique presentation, specially tailored for California in-house counsel, Mercedes Meyer, PhD., JD addresses the oft ignored issue of mental health challenges for intellectual property counsel. Statistical analysis, descriptive definitions, and the impact on the IP practitioner, with opportunities for career saving support are described in detail. Depression, anxiety disorders, work and familial stressors, as they impact lawyers at each stage of their career will be discussed. Myths related to mental illness, and the legal professional will also be addressed as well as self-reporting issues within a corporation and with the State Bar. Finally, tools for self-evaluation, recognition, and resources for care are provided. This one hour webinar could change your career, and your life!

Speaker: Mercedes K. Meyer, PhD., JD is a partner in the Intellectual Property Practice Group of Drinker Biddle & Reath, LLP where she drafts, prosecutes, and opines on U.S and foreign biotech patents. She also manages domestic and foreign patent portfolios for international chemical and biotech companies throughout the world. Mercedes co-authored Patent Ethics - Prosecution (2009) with David Hricik for Oxford University Press. She speaks and provides expert opinions on ethics issues arising from patent prosecution. Mercedes received her bachelor's degree in chemistry from Bryn Mawr College, and her Ph.D. in virology from the University of Texas Graduate School of Biomedical Sciences at Houston and The University of Texas M.D. Anderson Cancer Center. She earned her J.D. from the University of Houston Law Center.

Webinar: What’s the Deal? What In-House Counsel Need to Know About Intellectual Property Transactions

Wednesday, August 19, 2015, 12 noon - 1 p.m.

Presented by the In-House Counsel Interest Group

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

Your client spends millions of dollars developing IP, or it may need to license critical third-party IP to keep its doors open and products flying off the shelves. Not fully and effectively identifying and addressing transactional issues could be financially disastrous. This presentation will provide an overview of general IP transaction issues, including non-disclosure agreements, licensing agreements, joint development agreements, and supply agreements.

Speaker Charlie O'Brien is the Chair of Cantor Colburn’s intellectual property transactional group, concentrating his practice on the exploitation, transfer, and licensing of technology, and IP rights through various IP related transactions. He has extensive experience in all aspects of complex IP licensing, including the preparation and negotiation of patent license agreements, software license agreements, joint development agreements, trademark license agreements, material transfer agreements, joint marketing and promotion agreements, and the like.  He is admitted to the U.S. Court of Appeals for the Ninth Circuit, Federal Circuit, and registered to practice before the USPTO.

Webinar: Content and Control Online: Changes in Responsibility for Online Content

Tuesday, August 25, 2015, 12 noon - 1 p.m.

Presented by the Technology, Internet & Privacy Interest Group

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

In the last year, numerous laws have been proposed or enacted, and cases have come through the courts, placing new restraints on online speech. Laws that regulate advertising for prostitution, restrict revenge porn, or establish a “right to be forgotten” may have admirable goals, but they have a significant impact on the intermediaries that host online content. Intermediaries are protected by the safe harbor of 47 USC § 230, but these new regulations affect § 230’s immunity in interesting and potentially dangerous ways.

Moderator: Hannah Poteat
Speaker: Eric Goldman

Interest Group Meetings

Licensing Interest Group

Friday, August 14, 2015, 12 noon - 1 p.m.

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.


Message from the Licensing Interest Group

Lawyers who draft dispute resolution provisions in their agreements will want to take a look at Delaware’s new “rapid arbitration” procedure, which recently went into effect. In principle, the procedure does what its name suggests: expedite dispute resolution. Consistent with Delaware’s approach to law, many, but not all, of the aspects of the procedure can be modified by law. However, both parties must be corporate entities and at least one must be a Delaware corporate entity. These new procedures should be popular not only because of the high number of corporations incorporated under Delaware law but also because of the flexibility available to structure dispute resolution under this new law. The text of the law, as well as commentary on the new procedure can be found HERE.

Copyright Office Calendar

Copyright Office Extends Period for Reply Comments in Notice of Inquiry Regarding Copyright Protection for Certain Visual Works:  The Copyright Office has published a Federal Register notice extending the deadline for public reply comments that reply to initial comments submitted in connection with the Office’s April 24, 2015, Notice of Inquiry on Copyright Protection for Certain Visual Works. Reply comments are now due on October 1, 2015.  For more information, please see http://copyright.gov/policy/visualworks/.

The Copyright Office is also still accepting comments on its Orphan Works and Mass Digitization Report."  The full report is available at http://1.usa.gov/1dd1W02. The Notice of Inquiry is available http://1.usa.gov/1cXjGie. Written comments are due on or before October 9, 2015.

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 Summer issue, you can earn credit for the article  A Closer Look at Section 1202 Litigation and the Developing Jurisprudence of Copyright Management Information by Austin Ray Phillips. 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.

Online Catalog

Featured CLE Program from Our Catalog!

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

2015 Trademark Office Comes to California: From Dot Coms to "Not Coms": Protecting Marks, Enhancing Brands, Valuing and Transferring Rights

This program will cover the following topics:

How can you assist clients in estimating the value of domain names they want to buy or sell, and what are the key considerations in negotiating a transfer? How can you best guide clients through the new gTLD landscape to protect and enhance the value of their most important marks? Our panelists will offer practical advice and share strategies based on their extensive legal and industry experience in trademark protection, domain portfolio management, and digital marketing.

'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.

The New 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.


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

Third Party Programs

AIPLA and USPTO Roadshow Coming to Santa Clara

The AIPLA, USPTO and High Tech Law Institute of Santa Clara present a Roadshow Series program Enhancing Patent Quality and Conducting AIA Trials in Santa Clara on Monday, August 24, 2015.  Full program available here http://bit.ly/1I7Ogiw. Register here: http://bit.ly/1Ipq8ah.

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.