Inevitable Disclosures
May 15, 2016


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 Saleforce'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


Webinar: Gray Areas in the IP Law of Latin America

Wednesday, May 18, 2016, 12 noon - 1 p.m.

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


The goal of this webinar is to provide the audience with an overview of the intellectual property laws of several countries in Latin America emphasizing the differences with US trademark, patent, and copyright laws to help the audience get a better and deeper understanding of the challenges and obscure issues that arise when working with clients and companies doing business in the region.

The presentation will include a discussion of the relevant topics in trademark and copyright, as well as other intellectual property issues showing the comparison between the rules and legislation in countries such as Argentina, Brazil, Chile, Colombia, and the Andean Region, Central America, and Mexico. Special attention will be drawn to topics like the Madrid Protocol and Agreement and its lack of popularity in Latin America; Patent Cooperation Treaty and its slow implementation in certain countries; and the particularities of copyright law in those countries. The webinar will also explain the general rules that govern the intellectual property treaties in the Andean region.

Moderator: David Tseng, Vice-Chair, International Interest Group

Speaker: Mariana Paula Noli, NOLI IP Solutions PC

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.


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.


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.

Interest Group Open Calls

Licensing Interest Group Open Call

Friday, June 10, 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.

Third-Party Programs

Copyright Office Software-Enabled Consumer Products Study Roundtable

The Copyright Office will be conducting a public roundtable to gather input for its study on software-enabled consumer products in San Francisco on May 24, 2016. More information. Request to participate here.

Copyright Office Section 1201 Study Roundtable

The Copyright Office will be conducting a public roundtable to gather input for its study on Section 1201 of title 17, including the triennial rulemaking process, in San Francisco on May 25.  Note that this is a date change from the previous announcement. More info here. Request to participate here.


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.

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.


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.

2016 IP Section's 2016 Washington DC delegation

The IP Section's 2016 Washington DC delegation has just returned from Washington DC after very informative meetings with the House, the Senate, the FTC, the DOJ Criminal Division, the Copyright Office, the Patent and Trademark Office, and the White House. Look for the Delegation's full report in the Summer issue of New Matter. Bigger versions of the photos are posted on our Facebook page. Just click on them.

The IP Law Section's Washington DC Delegation at The  White House on April 20th, 2016. From left to right: Deborah Greaves, Rebecca Chen, Heather Antoine, Bennet Kelley, and Thomas Hassing (missing: Peter Bromaghim). (photo credit: The White House)

The IP Law Section's Washington DC Delegation meeting with Under Secretary of Commerce Michelle Lee at the USPTO on April 19th, 2016. From left to right: Thomas Hassing, Bennet Kelley, Rebecca Chen, Michelle Lee, Deborah Greaves, Heather Antoine, and Peter Bromaghim. (photo credit: USPTO)

Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice

The USPTO has published a Notice of Proposed Rulemaking entitled "Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice," Federal Register, Volume 81, No. 64, pp. 19296-19324 (available here)  There are numerous proposed changes, including that service of papers between parties be made via email, limiting document and admission requests to 75 each, an option to permit submission of witness testimony at trial in inter partes cases by affidavit or declaration, and permitting the Board to grant judgment for a defendant sua sponte when the plaintiff has not submitted evidence and its time for taking testimony has expired. As these are just a few of the proposed changes, practitioners are encouraged to review the complete list. The deadline for comments is June 3, 2016 and may submitted via email,, or at the above website by following the "Submit a Formal Comment" link.

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 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

MCLE Catalog

Featured CLE Program from Our Catalog!

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 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.