Inevitable Disclosures
June 15, 2016

Contents

Webinars

Webinar: Recent And Proposed Changes To Consumer And Copyright Law In The EU

Tuesday, June 21, 2016, 12 noon - 1 p.m.

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

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This presentation will provide an overview of recent and proposed changes to consumer and copyright law in the EU, with a particular focus on the Digital Single Market initiative, which promises to make it easier (and cheaper) for businesses to buy and sell digital products and services across the EU.

The EU's Digital Single Market Strategy, which aims to "create a Digital Single Market where everything that is also possible in the physical Single Market is possible in the digital world," has gathered significant momentum since its announcement in May 2015. We expect significant legislative reforms to be implemented in 2016. Given the pace of the strategy and the large number of topics covered, it can be difficult to stay up to date with the latest developments or to assess what they mean for your business. The speaker will guide you through the whole strategy, from an explanation of what it is and why it has been proposed to an overview of each of the individual initiatives, with a particular focus on consumer and copyright reform.

Moderator: Rebecca Chen, Chair, International Interest Group of the Intellectual Property Law Section

Speaker: John Davidson-Kelly

John is a Partner in Osborne Clarke's commercial team with particular expertise in the digital media and technology sector. He specializes in commercial contracts and joint ventures and in providing regulatory advice on intellectual property rights, consumer law and broadcasting regulation, which often involves coordinating multi-jurisdictional compliance exercises. He is also an expert in the EU Commission’s Digital Single Market initiative.

He has extensive experience in setting up and advising all types of digital platforms, from online marketplaces, to music streaming platforms to content aggregators. In particular, John has unrivaled experience in setting up digital entertainment platforms and services, having been lead advisor on the 3 most recent television platforms to be launched in the UK (YouView, Freeview Play and Vodafone) advising on all legal issues relating to launch and beyond.

John’s recent clients include Microsoft, Amazon, YouTube, Blinkbox, TVCatchUp, Facebook, Virgin Media, the BBC, Sky, YouView, BT, Vodafone, Huawei, Vestel, Sonos, Freeview Play, 7Digital, Warner Music, Chris Evans (TFI Friday and Top Gear), Robotwars, Deutche Telekom, VimpelCom and McDonalds.

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.

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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  is an attorney with a background in transactional IP, Internet, licensing, and privacy law. In her last role, Teri served as a Staff Attorney at New Media Rights where she worked with a wide variety of creators and entrepreneurs who would not have otherwise had access to critical legal services including: drafting and negotiating licensing agreements, IP and privacy counseling; fair use reviews, and drafting a variety of commercial agreements. In addition to providing one-on- one assistance Teri worked on a variety of different policy proceedings. She also worked on producing written educational materials including New Media Rights' upcoming book, "Don't Panic :)  A Legal guide for Small Businesses & Creative Professionals". Finally she co-founded and co-taught the Internet & Media Law Clinic at California Western School of Law.

Teri received her J.D. from Santa Clara Law in 2012. While she was at Santa Clara Teri earned numerous awards for her work in IP and privacy including the High Tech Law Certificate with a specialization in intellectual property with Honors, a Pro-Bono Award for her work at the Electronic Frontier Foundation, the Witkin Award for Academic Excellence for Virtual World Law and the CALI Excellence for the Future Award for Mass Communications II. During her time at Santa Clara she served as a Lead Production Editor on the Santa Clara Computer and High Tech Law Journal.

Teri received her B.A. with honors in Creative Writing from the University of Arizona in 2009. She was also inducted into Phi Beta Kappa.

Speaker: Kyle Welch received a B.S. in mechanical engineering at Ohio State University in 2011 before receiving his J.D. from California Western School of Law in 2014. In his time at CWSL, Kyle interned at New Media Rights, a nonprofit organization providing free and low-cost legal advice to internet users, artists, and entrepreneurs (where he is now an acting member on the advisory board); studied patent prosecution at an internship at SPAWAR, in the Navy’s patent division of general counsel; served as an associate editor for the California Western Law Review and International Law Journal; and externed for the Honorable Karen Crawford at the United States District Court, Southern District of California. An attorney in the State of California, Kyle is currently a Licensing Associate at the San Diego State University Technology Transfer Office, where he works to secure intellectual property rights on behalf of the University, and then to transition that intellectual property to market for the public benefit. He is also Lead Editor for Columbia’s Global Freedom of Expression project.

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
Presented by the Copyright Interest Group.

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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 is a Professor of Law and the founding Director of the Intellectual Property Law Center and Program at Golden Gate University School of Law. A member of the faculty since 2000, he teaches Intellectual Property Survey, Internet and Software Law, Intellectual Property and New Technology, and Entertainment Law in the IP curriculum. He was the 2010-2011 Chair and is presently on the Executive Board of the Art Law Section of the American Association of Law Schools, and is a past co-chair of the Copyright Section of the San Francisco Intellectual Property Law Association. He is a member of the Books Editorial Board of the IP Law Section of the ABA, and the Vice Chair of the Working Group on Literary Works for the IP Section.

Professor Greenberg received his B.A. degree in English Literature from the University of California, Berkeley; and his J.D. from the University of California, Hastings College of the Law. While in law school he served as an Articles Editor of the Hastings Constitutional Law Quarterly and published the first of his scholarly works analyzing the First Amendment cases of the Supreme Court’s 1978 term.

Professor Greenberg’s scholarship has focused on legal issues pertaining to comic art, content on the Internet, obscenity law in online contexts, and copyright issues both in the U.S and in China.  In 2014 his book, Comic Art, Creativity And The Law was published by Edward Elgar Publishing. His latest book, Copyright’s Termination And Recapture Laws: Policy And Practice is forthcoming in August 2016 from ABA Publishing. His articles have been published in the Berkeley Technology Law Journal, The Syracuse Journal of Law and Technology, The John Marshall Review of Intellectual Property Law, and The Loyola Chicago University Journal of International Law.

Before joining the GGU faculty, Professor Greenberg practiced IP, entertainment and business law, in both transactional work as well as litigation, in several firms in Northern California.

Webinar: The New Federal Trade Secret Law: Practical Tips and Strategies

Thursday, June 30, 2016, 12 noon - 1 p.m.

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

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The Defend Trade Secrets Act allows federal claims while keeping state law intact. How to decide what claims to bring in what court? What will be the impact on departing employee injunctions? On whistleblowers? This session will address the practical impact of the new law on trade secret owners, employees and their lawyers.

Moderator: Anne-Marie Dao
Speaker: James Pooley

James Pooley, trade secrets practitioner for more than 40 years, teacher, author of the treatise Trade Secrets as well as the recent business book Secrets: Managing Information Assets in the Age of Cyberespionage, testified to Congress and helped draft the DTSA.

Interest Group Open Calls

Licensing Interest Group Open Call

Friday, July 8, 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.

Copyright Interest Group Open Call

Wednesday, July 13, 2016, 12 noon
Call-in number: 855-520-7605 Conference Code: 1211276419#.

Please join the Copyright Interest Group for a member call on Wednesday, July 13 at 12 noon. During the call we will have open discussion about important new copyright cases and other recent copyright developments. All IP Section members are invited to participate. For more information about the call or the Copyright Interest Group, contact Chair Chris Lockard at clockard@salesforce.com

Live Programs

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 Salesforce'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; Santa 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.

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

News

Vanguard Award Nominations

Your Nominations Sought for the IP Vanguard Awards.  Start thinking about your nominations for the 2016 Vanguard Awards! Achievements are honored in the following categories:

  • In-House Counsel
  • Private Practice
  • Academic/Public Policy
  • Judicial

The full criteria and information about past honorees are available at IP Vanguard Awards. Please submit your nominations for the 2016 IP Vanguard Awards by July 1, 2016, using the 2016 Nomination Form.

Registration of DMCA Agents, Notice Of Proposed Rulemaking And Request For Comments

Under the Digital Millennium Copyright Act (“DMCA”), the U.S. Copyright Office is required to maintain a current directory of agents that have been designated by online service providers to receive notifications of claimed infringement. Since the DMCA's enactment in 1998, online service providers have used a paper form to designate agents with the Copyright Office, and the Office has made scanned copies of those paper forms available to the public by posting them on the Office's Web site. In 2011, the Copyright Office issued a notice proposing updated regulations governing the designation of agents under the DMCA in anticipation of the creation of a new online system though which service providers could more efficiently designate agents with the Copyright Office and the public could more easily search for such agents. With the development of this electronic system approaching completion, this notice proposes an amendment of the Office's regulations to lower the fee for designating an agent under the DMCA. For more information, click here.

Copyright Office Requests Public Comment on Two New Topics

The U.S. Copyright Office is seeking public comment on potential changes to the mandatory deposit regulations for electronic works not available in a physical format.  Comments are due July 18, 2016.  More info here.

The Office is also seeking public comment on a fee change for designating agents to receive notifications under the DMCA.  Comments are due June 14, 2016.  More info here.

California Assembly Judiciary Committee Considering Copyright for State Works

The October  15, 2015, edition of Inevitable Disclosures included a piece about the City of Inglewood having sued a resident alleging copyright infringement for posting videos of city meetings. The City lost because under California law the City could not hold a copyright in those videos or other works it authors. Now the Judiciary Committee of California's Assembly has introduced a bill proposing legislation that would allow California governmental entities, such as municipalities, to hold copyright in the“works of such entities. (The Federal Government cannot hold copyright in works that it authors.) The proposed legislation may be found here.

Defend Trade Secrets Act of 2016

On May 12, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016, which Congress passed on April 27.

What Does the DTSA Provide?

The DTSA authorizes a civil action in federal court for the misappropriation of trade secrets that are related to a product or service used in, or intended for use in, interstate or foreign commerce.  Prior to the passage of the DTSA, civil trade secret claims were solely a matter of state law, with 48 states having adopted some version of the Uniform Trade Secrets Act (“UTSA”) and the remaining states recognizing common law claims for misappropriation of trade secrets.  While the DTSA does not displace these state law claims, it provides a federal civil claim above and beyond the state law claims that previously existed.

How Does the DTSA Work?

The DTSA creates a uniform standard for trade secret misappropriation by expanding the Economic Espionage Act of 1996 (“EEA”) to provide a federal civil remedy for trade secret misappropriation.  The DTSA also provides pathways to injunctive relief, monetary damages, and other remedies in federal court for companies whose trade secrets are misappropriated, including via ex parte property seizures (subject to various limitations).   Through the ex parte seizure provision, a plaintiff can seek to have the government seize misappropriated trade secrets without providing notice to the alleged wrongdoer.  The DTSA further harmonizes the differences in trade secret law under the UTSA and provides more uniform discovery procedures.

What Are the Significant Provisions of the DTSA?

The DTSA provides aggrieved parties with legal recourse in federal court via a federal trade secret cause of action (whereas previously, relief was only available under the state law UTSA or common law claims), as well as new remedies, including a seizure order.  Below are the key provisions of the statute:

  • The DTSA provides for actual damages, restitution, injunctive relief, exemplary relief (up to two times the award of actual damages), and attorney’s fees.
  • Ex parte property seizures are available to plaintiffs, but subject to limitations. As noted above, an ex parte seizure means that an aggrieved party can seek relief from the court against a party to seize misappropriated trade secrets without providing notice to the alleged wrongdoer beforehand.  As a measure to curtail the potential abuse of such seizures, the DTSA prohibits copies to be made of seized property, and requires that ex parte orders provide specific instructions for law enforcement officers performing the seizure, such as when the seizure can take place and whether force may be used to access locked areas.  Moreover, a party seeking an ex parte order must be able to establish that other equitable remedies, like a preliminary injunction, are inadequate.
  • Injunctive relief for actual or threatened misappropriation of trade secrets is available in federal court.  However, a court will not enjoin a person from entering into an employment relationship unless there is a showing through evidence of “threatened misappropriation and not merely on the information the person knows.”  This language was included in the DTSA to guard against plaintiffs pursuing “inevitable disclosure” claims.
  • The statute of limitations is three years.  A civil action may not be commenced later than 3 years after the date on which the misappropriation with respect to which the action would relate is discovered or by the exercise of reasonable diligence should have been discovered.
  • A whistleblower immunity provision exists to protect individuals from criminal or civil liability for disclosing a trade secret if it is made in confidence to a government official, directly or indirectly, or to an attorney, and it is made for the purpose of reporting a violation of law.  Similarly, a related provision states that an individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding as long as the individual files any document containing the trade secret under seal and does not disclose the trade secret, except pursuant to court order.
  • The immunity provision places an affirmative duty on employers to provide employees notice of the new immunity provision in “any contract or agreement with an employee that governs the use of a trade secret or other confidential information.”  This notice provision applies to contracts and agreements that are entered into or updated after the date of DTSA’s enactment (May 11, 2016).
  • An employer will be in compliance with the notice requirement if the employer provides a “cross-reference” to a policy given to the relevant employees that lays out the reporting policy for suspected violations of law. Should an employer not comply with the above, the employer may not recover exemplary damages or attorney fees in an action brought under the DTSA against an employee to whom no notice was ever provided. Curiously, the definition of “employee” is drafted broadly to include contractor and consultant work done by an individual for an employer.
  • The “Trade Secret Theft Enforcement” provision increases the penalties for a criminal violation of 18 U.S.C. § 1832 from $5,000,000 to the greater of $5,000,000 or three times the value of the stolen trade secrets to the organization, including the costs of reproducing the trade secrets.
  • The DTSA further amends the RICO statute to add a violation of the Economic Espionage Act as a predicate act.

Third-Party Events

The Silicon Valley USPTO offers a variety of events that may be of interest to you. All of these events are free and open to the public, and most are held in the new office in the wing building of San Jose City Hall in downtown San Jose. Please register or get more information by clicking the links below, or by visiting www.uspto.gov/siliconvalley.

June 16, 2016, 9 a.m. - 11 a.m. PT
Access to Relevant Prior Art and Global Dossier Information Sessions
USPTO Silicon Valley Office
The Office of International Patent Cooperation highlights Global Dossier, conducts a focus session on access to prior art and requests comments on the project from the public.

June 18, 2016, 10 a.m. - 1 p.m. PT
Saturday Seminar
USPTO Silicon Valley Office
Experts from the USPTO conduct a workshop for entrepreneurs and independent inventors to discuss types of intellectual property, the patent process, patent searching, and electronic filing.

June 22, 2016, 1 p.m. - 3:30 p.m. PT
Trademark Madrid Protocol: Update and Tips for Users
USPTO Silicon Valley Office
Two Madrid Protocol experts provide an update about the international trademark agreement and tips on filing those applications at the USPTO.

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.

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

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.