Inevitable Disclosures
June 30, 2016

Contents

Webinars

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.

REGISTER TODAY

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.

Webinar: A Primer on Reasonable Royalty Damages for Trade Secret Litigators

Thursday, July 28, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

In trade secrets cases, reasonable royalties can provide an alternative to lost profit and unjust enrichment damages.  Such an alternative may be useful if trade secret theft is caught before it can be shown that the defendant diverted sales from the plaintiff or gained a profit. In some cases, this may be the only measure of damages available to trade secret plaintiffs because of the unique facts of the case. 

While there has been slow but steady development of case law on reasonable royalty damages in trade secrets cases, most recent developments have occurred in patent cases. This webinar will focus on bringing participants up to speed on these developments and how this case law may influence trade secret damage claims. We will start with a discussion of trade secrets reasonable royalty case law (e.g., Ajaxo and Altavion) and the Georgia Pacific patent royalty factors, followed by a discussion of the two main approaches to calculating a reasonable royalty–-analysis of comparable licenses and analysis of the benefits enabled by the trade secret (be it revenue increases and/or cost savings). Along the way we will cover hot topics such as the Entire Market Value Rule, the Smallest Saleable Unit, apportionment, Uniloc and the 25% rule, and bargaining (including Nash and other methods).

Moderator: Catherine Lui
Speaker: Eric Forister

Dr. Eric Forister is an economist with expertise in industrial organization, applied microeconomics, and applied econometrics. He has extensive experience in applying economic insights to understand firm and market behavior, analyzing large datasets using advanced econometric and statistical techniques, and designing and evaluating surveys. He has co-authored medical research papers and legal publications on class certification and market definition.

Dr. Forister has worked on both the plaintiff and defense sides of antitrust, intellectual property, consumer fraud (marketing), and breach-of-contract cases. As a consultant, he has addressed issues such as market definition, market power, competition, market pricing, merger efficiencies, common impact, materiality, reliance, ascertainability, royalty rates (including FRAND), damages, sampling, survey design, and irreparable harm. Dr. Forister has a BS in mathematics/economics from UCLA and a Ph.D. in Business Administration from Stanford Graduate School of Business. He is based in Econ One’s Los Angeles office.

Cathy Lui is a senior associate in Orrick Herrington & Sutcliffe’s Complex Litigation and Dispute Resolution Group, based in the San Francisco office. Cathy primarily specializes in trade secrets litigation. She has particular expertise in obtaining and defending against temporary restraining orders and preliminary injunctions under exigent circumstances in fast-paced trade secret actions. Cathy’s practice is across multiple jurisdictions in both federal and state courts, and involves a variety of different types of trade secrets including technical secrets, financial information, and products and sales information.

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.

In Memoriam: Former Commissioner for Trademarks Lynne G. Beresford

We are saddened to learn of the passing of former Commissioner for Trademarks Lynne G. Beresford who died June 26, 2016. Ms. Beresford began her career at the USPTO in 1979 as a Trademark Examining Attorney and eventually became the Commissioner for Trademarks in 2005, a position she held until 2010. She chaired every meeting of WIPO’s standing committee on Trademarks, Industrial Designs and Geographical Indications from its inception in 1997 until late 2001 and was instrumental in drafting legislation to implement the Madrid Protocol and the Trademark Law Treaty. She was involved in founding ICANN and was essential in the adoption of its Uniform Domain Name Dispute Resolution Procedure (UDRP).

Commissioner Beresford was also a good friend to the IP Section. She was a frequent speaker at the Section’s bi-annual Trademark Office Comes to California conference and a gracious host to our Washington DC delegation.

Copyright Office Requests Public Comment

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.

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.

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.