Inevitable Disclosures
March 15, 2017

Register Now: Green Business: Advising Clients on Protecting and Enforcing Cannabis Brands, today at noon!

Contents

Interest Group Calls

April 5 Copyright Interest Group Call

Time: 12 noon – 1 p.m.

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

This month we will discuss two recently decided cases:

 Perfect 10, INC. v. Giganews, 2017 WL 279504 (9th Cir. Jan. 23, 2017). Perfect 10, is at it again and challenges the district court's partial dismissal of its direct copyright infringement claim and grant of summary judgment in favor of Giganews and Livewire as to all remaining claims. Perfect 10 also appeals the district court's award of attorney's fees and costs under the Copyright Act.

Fortgang v. Pereiras Architects Ubiquitous LLCLLC, 2017 WL 280713 (E.D.N.Y. Jan. 20, 2017). Homeowners Seth Fortgang and Rivka Fortgang allege that copyrighted design elements of their home are being infringed through the construction of a look-a-like home in neighboring town.

Join us for an interesting discussion of these two cases and more. Please note: Our monthly calls are the 1st Wednesday of every month at 12 noon PST.

April 14 Licensing Interest Group Call

Time: 12 noon – 1 p.m.

To participate in the call, 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.

Webinars

Webinar: Green Business: Advising Clients on Protecting and Enforcing Cannabis Brands

Wednesday, March 15, 2017, 12 noon - 1p.m.

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

REGISTER TODAY

This presentation will address two precedential decisions handed down by the TTAB in 2016, In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) and In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016).In Morgan Brown, the TTAB upheld the refusal of an application for HERBAL ACCESS for “retail store services featuring herbs” based on evidence on Applicant’s website and in Applicant’s specimen of use that the herbs in question were, as stated in Applicant’s advertising “Marijuana for the Masses.” Likewise, the Board in JuJu Joints upheld the refusal of POWERED BY JUJU and JUJU joints against an argument from the applicant that the goods were only being sold in states that had legalized marijuana. We will explore how these cases affect the strategies we give clients who are seeking trademark protection for cannabis-related goods and services, along with other cases showing the difficulties many companies face when attempting to actually enforce a cannabis-related trademark. The webinar will conclude with a discussion of practical ways to advise clients in this rapidly expanding enterprise, whether their objectives are local or national in scope.

Moderator: Kieran De Terra

Speakers: Jon Jekel and Dana B. Robinson

Webinar: Unpacking the California Supreme Court’s Ruling in Hassell v Bird

Wednesday, April 19, 2017, 12 noon - 1p.m.

Sponsored by the Technology, Internet & Privacy Law Interest Group. This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The plaintiff in Hassell v. Bird was a lawyer who sued a former client, claiming the client posted a negative review of her on Yelp. The client never responded. The lawyer then asked the court to enter an order requiring Yelp – who was not a party to the suit - to remove the post.

Yelp challenged the order. Surprisingly, in June of this year, the California Court of Appeal held that the court could force Yelp to remove the post.  The court also held that this order was consistent with § 230 of the Communications Decency Act, which provides Internet service providers immunity for content created by their users (with a couple exceptions). 

Yelp has since asked the California Supreme Court to review the case, which was granted on Sep. 21, 2016. 

The court’s opinion in Hassell v Bird has been called wrong, terrible, and even brutally ugly. It touches upon the First Amendment, Section 230, due process, and prior restraint. 

Get ready for a lively and exciting discussion!

Moderator: Heather Antoine
Speakers: David Gingras and Karl S. Kronenberger

Webinar: Getting Your Copy Right — Copyright Considerations in Advertising

Thursday, April 20, 2017, 12 noon - 1p.m.

This program offers 1 hour participatory MCLE credit. Presented by the Copyright Interest Group, and planned by the Patent Interest Group.

REGISTER TODAY

The use of creative works in advertising presents unique copyright issues. This presentation will discuss the clearance and use of such works in traditional advertising and social media, and enforcement of copyrights, including as a way to prevent false advertising and unfair competition.

Moderator: Sanjesh Sharma

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, and has served as an officer of the Patent Interest Group since 2013.

Speakers: Dale M. Cendali and Bonnie L. Jarrett  

Dale M. Cendali heads Kirkland & Ellis LLP’s Copyright, Trademark, Internet and Advertising Group. She is a nationally recognized leader in the field of intellectual property litigation, having successfully litigated and tried numerous high-profile cases, and having argued before the U.S. Supreme Court. Her practice encompasses copyright, trademark, false advertising, patent, Internet, and trade secrets law, as well as defamation, the right of publicity, privacy, complex contract disputes and similar areas, including electronic discovery.

In 2016, Law360 named Dale one of the 25 “Icons of IP” who have “made an indelible mark in the IP area.” In 2013, The National Law Journal selected Dale as one of the “100 Most Influential Lawyers in America.” The National Law Journal had previously named her one of “America’s Top 50 Women Litigators,” one of the “50 Most Influential Women Lawyers in America,” and one of “The Most Influential Lawyers” for media and entertainment. Dale has repeatedly been ranked as a “top tier” lawyer by Chambers Global and Chambers USA, which describes her as “one of the best lawyers in the country” in her field who combines “intellectual acuity” with a “tough, hard-working attitude”; a “superb litigator” who “thinks quickly on her feet and vigorously defends her clients.”

Dale is also an adjunct professor at Harvard Law School, teaching copyright and trademark litigation. She is also a prolific writer and has long been active in the bar. In 2010, INTA elected Dale to serve as Counsel, the highest-ranking position in the organization for an outside counsel. She also previously chaired INTA’s Dilution and Enforcement Committees, and is the current chair of INTA’s inaugural Copyright Committee. Dale was also the Vice Chair of the Copyright Division and chair of the IP Special Issues Division for the IP Section of the ABA, and currently serves on Council for the ABA IP Section. Among many other positions in the bar, Dale is also the former Chair of the Trademarks and Unfair Competition Committee of the Association of the Bar of the City of New York. In 2015, Dale was selected as an Adviser for the American Law Institute’s project, Restatement of the Law, Copyright.

Bonnie L. Jarrett is a partner at Kirkland & Ellis LLP’s New York office. Her practice focuses on intellectual properly litigation, including trademarks, copyrights, and false advertising. She represents clients across a wide range of industries, including entertainment and media, technology, pharmaceuticals, and consumer products. Bonnie also represents clients in trademark proceedings before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board, and counsels clients regarding the acquisition and retention of intellectual property rights.

Bonnie is a member of INTA and the Trademark Litigation Committee of the ABA Intellectual Property Law Section, where she serves on the Nominative Fair Use and Anti-Counterfeiting Subcommittees.

In 2014 and 2015, Super Lawyers Magazine named Bonnie a “Rising Star” in intellectual property litigation.

Webinar: The 2016 TTAB Year in Review

Tuesday, May 2, 2017, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit. Presented by the Trademark and In-House Counsel Interest Groups

REGISTER TODAY

John L. Welch’s blog, The TTABlog®, is a must-read for all trademark practitioners, and his insightful reviews of TTAB decisions are always informative and entertaining. This is a great opportunity to get caught up on those decisions you may have missed. Q&A will follow the presentation.

Moderator: Mary A. Harris
Speaker: John L. Welch

John L. Welch has represented clients in scores of patent, trademark, copyright, unfair competition, and domain name lawsuits across the country, and has handled hundreds of opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office.

Webinar: Current Developments in U.S. Patent Law With An Emphasis On Litigation and Licensing

Tuesday, May 16, 2017, 12 noon - 1p.m.

This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

The speakers will discuss new and ongoing developments in the areas of patent litigation and licensing, including  upcoming changes in venue for patent cases in TC Heartland, including important differences for domestic and foreign defendants; the potential impact of Lexmark on patent exhaustion, post-sale use restrictions, and extraterritorial application of the patent law; the impact of the recent decision in Life Technologies and how the law may further develop for liability under §271(f)(1); and the future of the laches defense in view of SCA Hygiene.

Moderator: Sanjesh Sharma
Speakers: Robert Benson and Christina Von der Ahe

Robert Benson is a partner at Orrick. His practice integrates over 25 years of experience in patent litigation, licensing, and other commercial and intellectual property litigation in federal and state courts. From significant multi-jurisdictional litigation to disputes between small competitors, Robert has a consistent track record of winning on the merits and achieving favorable results on behalf of his clients. He has extensive experience in all phases of litigation, through trial and appeal. His breadth of experience includes obtaining injunctive relief, litigating section 337 cases before the ITC and arguing before the Federal Circuit. He also integrates reexamination, inter partes review and other PTO proceedings into broader litigation and licensing strategies. Robert’s experience encompasses both defensive patent litigation and offensive patent enforcement through licensing and litigation. As a result of his frequent representation of clients in Taiwan, Japan and China, Robert has also developed an expertise in litigating issues that arise in the context of global businesses, multinational litigation and cross-border disputes. Patent litigation and licenses often give rise to unique issues, claims and defenses in the international context. Robert collaborates with each client to develop creative and cost-efficient strategies tailored to achieve his client’s objectives in each situation. He has been named a Super Lawyer for 13 consecutive years, from 2005 through 2017. His cases have involved a wide range of technologies, including semiconductors and semiconductor manufacturing, mobile devices, computer hardware and software, telecommunications, monitors, LCDs, LEDs, printers, cameras, and other consumer electronics.

Christina Von der Ahe is a partner in the Intellectual Property group in Orrick's Orange County Office. She has represented plaintiffs and defendants in high-profile patent, copyright, and trade secret litigation, as well as several other varieties of commercial disputes. A recovering gamer, Christy focuses her IP practice on representing clients in the fields of video games, interactive entertainment, new media and content and content-related technology. She serves as Co-Lead of Orrick's Video Game Group. Christy has a mechanical engineering degree from Stanford, and, as such, is able to immerse herself deeply in highly technical matters. She also prides herself on her oral and written advocacy, and has filed several successful dispositive motions, including motions for summary judgment of non-infringement. Christy is a founding member of the Howard T. Markey Intellectual Property Inn of Court in Orange County, and has served as Secretary, Membership Chair, and Programs Chair for that organization. She is an Editor of Orrick's Trade Secrets Watch Blog. Prior to joining Orrick, Christina clerked for one year for the Honorable Andrew Guilford of the Federal District Court of the Central District of California.

Sanjesh Sharma is IP Counsel at Johnson & Johnson 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, and has served as an officer of the Patent Interest Group since 2013.

Webinar: Hot Off the Press: 2017 Trademark Trial and Appeal Board (TTAB) Rule Changes

Tuesday, June 13, 2017, 12 noon - 1p.m.

Sponsored by the Trademark Interest Group, In-House Interenst Group. This program offers 1 hour participatory MCLE credit.

REGISTER TODAY

In January 2017, the Trademark Trial and Appeal Board (TTAB) issued the broadest revision of its rules in a decade. Gain insight into the practical application of the new rules in inter partes and ex parte cases through a discussion of the changes with Administrative Trademark Judge Cindy Greenbaum and Interlocutory Attorney Benjamin Okeke. Topics will include mandatory electronic filing, changes to service of the initial complaint, discovery matters, and introduction of evidence during the trial period. Learn how to navigate the new rules and avoid the pitfalls that may plague those relying on old forms and practices. This presentation is a great opportunity to get caught up on the changes to the TTAB rules and will benefit attorneys with various levels of experience practicing before the TTAB.

Moderator: Carole Barrett
Speakers: Cindy Greenbaum and Benjamin Okeke

Cindy Greenbaum is an Administrative Trademark Judge with the TTAB and previously served as a Managing Interlocutory Attorney, an Interlocutory Attorney, and a Trademark Examining Attorney.

Benjamin Okeke is an Interlocutory Attorney with the TTAB where he decides non-dispositive motions in inter partes proceedings and previously served as a Senior Attorney, and a Trademark Examining Attorney.

News

USPTO announces the Patent Pro Bono Program

For years legal professionals have offered pro bono services in many other areas of law, such as domestic relations, tax, and immigration.

Now, patent practitioners can donate their time to help inventors who cannot afford to obtain legal advice on the filing and prosecution of patent applications. Because only patent practitioners are registered to represent inventors before the USPTO, they are in a unique position among legal professionals to offer pro bono patent services to under-resourced inventors and small businesses. The program provides opportunities for patent practitioners to work with the regional program in their area to find a commitment that is suitable for them, while providing under-resourced inventors across the U.S. opportunities to secure legal assistance for their patent needs.

Those who provide at least 50 hours of patent pro bono service to their local pro bono program during calendar year 2017 will receive a certificate of recognition. The personalized certificates will be signed by Commissioner of Patents Andrew Hirshfeld and William Covey, Director for the Office of Enrollment and Discipline. In addition, the names of the practitioners will be posted on the USPTO website. We hope that our membership will take advantage of this opportunity.

Why should I volunteer my time?

You will have the fulfilling experience of making a real difference in the lives of your clients and in your community while practicing in your field of expertise. Each regional program acts as a matchmaker, using a carefully screened and vetted process to ensure that applicants are qualified to receive pro bono patent filing and prosecution services. By making the patent system available to all, pro bono patent practitioners fulfill important needs such as providing equal access to the U.S. patent system and fostering economic growth and entrepreneurship. Patent practitioners nationwide have already answered the call to volunteer. Show your interest by contacting your local regional program today!

Members of the State Bar of California can volunteer through the California Inventors Assistance Program. Please see www.uspto.gov/probonopatents for more information or contact Grant Corboy grant.corboy@uspto.gov or John Kirkpatrick john.kirkpatrick@uspto.gov.

Copyright Office Extends Comment Period for Moral Rights Study

The U.S. Copyright Office has published a Federal Register notice extending the deadlines for public comment in connection with the Office’s study on the moral rights of attribution and integrity. Public comments are now due no later than 11:59 p.m. Eastern time on March 30, 2017, and reply comments are now due no later than 11:59 p.m. Eastern time on May 15, 2017. Additional information, including instructions on how to submit a comment, is available here.

Copyright Office Proposes Amending Regulations to Address Disruption of Copyright Office Electronic Systems

Disruption of Copyright Office Electronic Systems The U.S. Copyright Office is proposing to amend its regulations to address the effect of a disruption or suspension of any Office electronic system on the Office’s receipt of applications, fees, deposits, or other materials. The amended regulations specify how the Office will assign effective dates of receipt to materials attempted to be submitted during a disruption or suspension of an Office electronic system. In addition, the proposed rule specifies how the Office will assign effective dates of receipt when a specific submission is lost in the absence of a declaration of disruption, as might occur during the security screening procedures used for mail that is delivered to the Office.

The Office seeks public comments on the proposed regulations that will be considered in promulgating a final rule. The proposed regulations and instructions on how to submit a comment are available here. Written comments must be received no later than April 3, 2017, at 11:59 p.m. Eastern time.

https://www.copyright.gov/rulemaking/eoutages/

Call for Applications for New Matter Editors

Application deadline: June 2, 2017

New Matter is the quarterly official publication of the Intellectual Property Law Section. It is a journal of current comment and analysis of cases and issues vital to the use of intellectual property. The journal is sent free to members of the Intellectual Property Law Section. IP Section members volunteer for a variety of editor positions for a term of 1 year subject to reappointment. This is an opportunity to contribute to the legal profession and the public and a great opportunity to get more involved with the Section, network with colleagues, and work on an excellent publication.

If you are currently a member of the IP Section and are interested in being considered for an editorial position, please provide the following information to Section Coordinator John Buelter at John.Buelter@calbar.ca.gov no later than June 2, 2017;

1. a statement of interest setting forth the reason you want the position and why you should be selected for it;
2. a resume providing general information about your legal and publishing background;
3. a work product /writing sample;
4. letter(s) of recommendation (optional).

Copyright Office Section 512 Empirical Research Study--Deadline March 22, 2017

The U.S. Copyright Office is undertaking a public study to review how existing state and federal law protects the moral rights of attribution and integrity and whether any additional protection is advisable in this area. To support the congressional review of the nation’s copyright law and provide thorough assistance to Congress, the Office is seeking public input on a number of questions.

The Office published a Federal Register on January 23, 2017 soliciting written comments from the public. Instructions for submitting comments are available here. Comments must be received no later than 11:59 p.m. Eastern time on March 9, 2017. Reply comments must be received no later than 11:59 p.m. Eastern time on April 24, 2017. The Office may announce one or more public meetings, to take place after written comments are received, by separate notice in the future.

Third-Party Programs

USC Gould School of Law 2017 Intellectual Property Institute

When:  Tuesday, March 21, 2017, 7:30 a.m. to 5:45 p.m.
Where:  The Fairmont Miramar Hotel & Bungalows, Santa Monica, CA
What:  Network with over 650 intellectual property professionals
Who:  National speakers on cutting edge patent, copyright and trademark issues:

  • Sony Pictures Motion Picture Group Chairman Tom Rothman in a luncheon fireside chat.
  • Judge McKeown (9th Cir.) on Pushing the Limits of Intellectual Property Law.
  • Judges Raymond Chen (Fed. Cir.), Dalton (M.D. Fla.), Huff (S.D. Cal.) and Kronstadt (C.D. Cal.) with Judicial Perspectives on the New World of Intellectual Property.
  • Judges Dalton (M.D. Fla.), Fischer (W.D. Pa.), Huff (S.D. Cal.) and Schroeder (E.D. Tex.) on Managing the High Profile IP Case.
  • Judges Raymond Chen (Fed. Cir.) and Peter Chen (PTAB) on Inter Partes Review and the Increasing Role of the PTAB in Invalidity Litigation.
  • Professors Farley, Lemley, and Nimmer in the popular IP Year in Review.
  • Plus, top IP professionals discuss the latest issues relating to how European copyright developments are affecting U.S. businesses, enforcement and strategies against counterfeiters and diverters, how communications law issues affect copyright, protecting global brand and trademark value and much more!
  • 8.25 hours of MCLE credit and 7 hours of CPE credit for the March 21 Institute (plus additional credits for those attending the IP Remedies Roundtable and Workshop

See the full lineup of speakers and topics by clicking here.

For more information visit http://law.usc.edu/cle/ip. Contact the USC Gould Continuing Legal Education office with questions at (213) 821-3580 or cle@law.usc.edu.

The Silicon Valley Branch of the Patent and Trademark Office Announces Free Upcoming Events

March 16, 2017, 12 PM – 1 PM
Patent Brown Bag “Lunch and Learn”
Silicon Valley USPTO
Supervisory patent examiner helps inventors and entrepreneurs during live information session.

March 21, 2017, 1 PM – 3 PM
Hands-on Patent Search Workshop
Supervisory patent examiner provides hands-on patent search training using USPTO search tools.

March 25, 2017, 10 AM - 12 PM PT
A Day in the Life of a Patent Examiner
Silicon Valley USPTO
Supervisory patent examiner will discuss the qualifications and role of an examiner plus demonstrate tools used in the examination process.

March 25, 2017, 1:30 PM – 3:30 PM PT
How to Make Money with Your Invention
Silicon Valley USPTO
Licensing Executives Society Silicon Valley Chapter and the California Invention Center present an educational series for inventors and entrepreneurs.

March 28, 2017, 12 PM - 1 PM PT
Design Patent Brown Bag "Lunch and Learn"
Silicon Valley USPTO
Supervisory patent examiner will give an overview of the design patent system and answer general design patent questions.

April 7, 2017, 9 AM – 11 AM PT
Trademark Basics:  What Every Small Business Should Know Now, Not Later
Silicon Valley USPTO
Jason Lott, USPTO Attorney Advisor for Trademark Educational Outreach, provides trademark basics and answers your questions.

April 7, 2017, 12 PM – 1 PM PT
Silicon Valley USPTO Public Tour
Silicon Valley USPTO
Tour of the Silicon Valley USPTO and its available resources to entrepreneurs and innovators.

April 11, 2017, 9 AM – 10 AM PT
Patent Quality Chat Webinar – Simulcast
Silicon Valley USPTO
Join us for a webinar viewing on a topic TBD.

April 11, 2017, 12 PM – 1 PM PT
Trademark Tuesday
Silicon Valley USPTO
Trademark Assistance Center provides trademark basics and answers questions via videoconference.

April 12, 2017, 1 PM – 3 PM PT
Disruptors vs. Predators
Silicon Valley USPTO
Five federal agencies inform small businesses on common predatory practices and fraud and provide prevention resources

April 20, 2017, 12 PM – 1 PM PT
Patent Brown Bag “Lunch and Learn”
Silicon Valley USPTO
Supervisory patent examiner helps inventors and entrepreneurs during live information session.

April 25, 2017, TBD
World IP Day—Registration coming soon
Silicon Valley USPTO
Join us for a World IP Day celebration and technology showcase on “Innovation—Improving Lives.”

The Silicon Valley, known as one of the most prodigious and innovative entrepreneurial communities in the country, was selected as our West Coast presence to assist the USPTO in fostering and protecting innovation.  Looking for information focused on startups? Visit our Startup Resources page.

MCLE Catalog

Featured CLE Program from Our Catalog!

Online
CLE

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

Studio Magic: Patents in the Digital Age

Credits: 1 Participatory MCLE Credits

For the first time on any stage the leading patent counsels from four major motion picture studios will  provide an interactive, collaborative presentation on patents in content creation, distribution and monetization. The current state of patent activity in film, television, ... Read More..

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 Matt Neco.