Inevitable Disclosures
October 15, 2016

Contents

  • Live Programs
    • IP Institute
  • Webinars
    • Trademarks Under the 12 Stars
    • Think B4 U Text: Avoiding Big $$ Liability Under the TCPA
    • Patent Clearance Strategies in the Wake of the Halo & Stryker Decisions
    • Copyright: Your Client Got a Book Deal, Now What?
    • A Global Approach to Grey Market Issues: Solutions and Remedies in Europe and in the US
    • Managing Influencers and Consumer Content on Social Media
    • M&A-Friendly Technology License Agreements
    • Intellectual Property Transactions in Israel
    • Using Surveys and Market Research in IP Litigation
  • News
    • Amended TTAB Rules Published in Federal Register 11/7
    • Copyright Office Seeks Additional Comments for Section 1201 Study
    • Copyright Office Technical Amendments
    • USPTO Seeking Comments on Proposed Patent Fee Adjustments
    • Congratulations to the 2016 IP Vanguard Award Recipients
    • Writers Wanted for New Matter
  • MCLE Catalog
  • Contact Us

Live Programs

Registration Now Open 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

Join us at the 41st Annual IP Institute, “IP on the American Riviera,” which will be held November 10 - 11 at the beautiful Hyatt Santa Barbara, with a welcome reception on November 9th. 

Panel Highlight: Your Guide to Penguin Super Heroes – Open Source Software Advantages, Compliance, and Enforcement. Join this year’s IP Vanguard Award winner Heather Meeker and other experts Dave Marr, and Jim Markwith to discuss issues in open source software. The technology press says open source software is “eating the world.” Once the domain of hackers and hobbyists, open source software development is now ubiquitous in the technology industry, and an understanding of open source licensing is now an essential tool in the skill set of all IP licensing lawyers. Our panel of experts will discuss the “origin story” and basic paradigm of open source software licensing, provide practical and effective tips for license compliance, and discuss the latest in license enforcement activities. More Information.

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

Webinars

Webinar: Trademarks Under the 12 Stars

Wednesday, October 19, 2016, 10 a.m. - 11 a.m.

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

REGISTER TODAY

A side-by-side comparison of the procedure of acquiring, maintaining and defending trademark registration, touching on closely related areas, like geographical indicators and industrial designs, from a legal practitioner’s point of view who has experienced this area of law in both jurisdictions and from different perspectives. The presentation will guide the audience through the registration procedure spotting the differences, like how unified the EU trademark system is compared to the federal system in the U.S. When does the likelihood of confusion come into play, and how? When does the applicant need to worry about use, and how do they prove it? What can we learn from the battlefield of GIs on both sides? How is it possible that industrial designs are even mentioned in a trademark presentation?

As the European Union is somewhat similar to the United States, the trademark system is, too. But there are at least as many differences as well. Nowadays, in our international world it is crucial to know these differences because they can mean everything.

Moderator: David Tseng
Speaker: Judit Marai

Webinar: Think B4 U Text: Avoiding Big $$ Liability Under the TCPA

Tuesday, October 25, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

With the ever-increasing number of lawsuits involving the Telephone Consumer Protection Act of 1991 (TCPA), it's more important than ever to be up-to-date with the latest information surrounding this challenging law. Companies face significant financial liability for failing to comply with the TCPA, which prohibits calling or texting consumers (and businesses) on their mobile phones without appropriate consent. The TCPA provides plaintiffs with an attractive private right of action with uncapped damages of $500 per violation, which can be trebled if willful or knowing.

No industry is immune from this law, where multi-million dollar settlements are almost daily occurrences. An especially problematic part of TCPA compliance is that it can be entirely out of the control of companies. When a company attempts to contact a consumer who had consented to contact but for whatever reason abandons their number, the company can still be held responsible for TCPA violations when the number is reassigned to another party.

Industry experts will advise on how to comply with the law and understand the FCC rules that present more questions than answers for companies that seek to avoid liability.

Moderator: Sophie Cohen
Speakers: Marc Roth, Christine Reilly, Diana Eisner

Mark Roth is a partner at Manatt Phelps & Phillips and co-chairs the firm's TCPA Compliance and Class Action Defense Group. Marc works with businesses of all sizes and in all industries to comply with state and federal laws and rules governing privacy, social media, sweepstakes, telemarketing and advertising. He also counsels clients on transactional matters, and guides them through federal and state government investigations. Previously chief compliance counsel for a Time Warner company and an FTC staff attorney, Marc draws upon decades of consumer advertising and marketing law experience when counseling clients. In the marketing arena, Marc counsels clients on how to develop and manage telemarketing programs that comply with the Telemarketing Sales Rule, the Telephone Consumer Protection Act and applicable state laws. He also advises companies on how to develop and manage free trial, negative option and continuity marketing programs in compliance with all applicable laws, regulations and credit card processing rules. Furthermore, Marc counsels clients preparing to conduct marketing campaigns through online social networks.

Christine Reilly is a partner at Manatt Phelps & Phillips and co-chairs the firm's TCPA Compliance and Class Action Defense Group.  As a litigator, Christine defends companies in consumer class actions and other major civil litigation in various areas, including consumer protection, unfair competition, and false and deceptive advertising. She also represents clients facing investigations and proceedings initiated by the Federal Trade Commission, Federal Communications Commission, Consumer Financial Protection Bureau, and other federal and state regulatory agencies.  Christine regularly defends companies from claims brought under the Telephone Consumer Protection Act. She has significant experience litigating under other federal statutes, including the Federal Trade Commission Act; Electronic Communications Privacy Act; Electronic Fund Transfer Act; Fair Debt Collection Practices Act; and the Magnuson-Moss Warranty Act. In addition to litigation, Christine regularly counsels clients on marketing and advertising practices and compliance with various consumer laws.

Diana Eisner is a litigation associate at Manatt Phelps & Phillips's D.C., office. Diana represents clients in complex commercial litigation in an array of areas. Diana’s areas of focus include defending claims brought under the Telephone Consumer Protection Act (TCPA), employment discrimination cases, shareholder disputes and other civil litigation matters. She represents individuals and regional and national businesses, such as retail, financial services and healthcare companies, in federal and state courts and arbitration hearings. Diana also counsels clients on data privacy issues, including compliance under the TCPA.

Webinar: Patent Clearance Strategies in the Wake of the Halo & Stryker Decisions

Wednesday, October 26, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

This program will discuss the current state of case law on willfullness and enhanced damages, including a discussion of the Halo Elecs, Inc. v. Pulse Elecs, Inc. decision, the Stryker Corp. v. Zimmer, Inc., decision, and recent case law interpreting those decisions. The program will also address practical tips for practitioners in writing freedom to operate opinions or conducting patent clearance efforts in light of current case law.

Moderator: Sanjesh Sharma
Speaker: Sarah Sheldon Brooks

Sanjesh Sharma is IP Counsel at Abbott Medical Optics, where she manages all aspects of patent, trademark, and copyright matters for the company’s Refractive and Laser Cataract Surgical Equipment portfolios. Since 2013, she has served as Vice Chair of the Patent Interest Group for the State Bar of California’s IP Section.

Sarah Sheldon Brooks is a shareholder in Stradling’s intellectual property practice. Ms. Brooks specializes in litigating intellectual property disputes. Ms. Brooks has successfully tried cases in Federal Court, including obtaining a willful infringement jury verdict in 2013 for a client in the U.S. District Court for the Central District of California. Ms. Brooks was named a Southern California Rising Star by Super Lawyers for the fourth year in a row from 2013-2016.

Webinar: Copyright: Your Client Got a Book Deal, Now What?

Thursday, October 27, 2016, 12 noon - 1 p.m.

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

REGISTER NOW

Over the last 20-years the publishing industry has gone from a highly lucrative industry to experiencing the biggest downturn ever. Why? The Internet. The digital age impacted book sales in such a way that it was sink or change—the industry changed. Like a Phoenix arising from the ashes, the book industry now reigns supreme. With a renewed sense of confidence comes power; power that may affect your author clients. Join a panel of industry professionals for a thought-provoking session on what every book attorney must know to effectively counsel their author clients. You’ll hear the perspective of a publishing lawyer, literary agent, book editor, and a bestselling lawyer/novelist.

 They will:

  1. Discuss how changes in the book industry legally affect your clients;
  2. Explore important contract provisions and how best to negotiate them;
  3. Identify best practices in counseling your author clients.

Moderator: Francine Ward
Faculty: Kimberley CameronGeorgia Hughes and D.P. Lyle.

Francine Ward is a business and intellectual property attorney with a focus on copyrights, trademarks, publishing, entertainment, and social media legal issues. A 1989 graduate of Georgetown University Law Center, Francine is admitted to practice in New York, California, and the District of Columbia. In addition, she received a 6-figure publishing deal from Random House for her first book, Esteemable Acts: 10 Actions for Building Real Self Esteem. Currently, Ward is working on her first crime novel.

Kimberley Cameron loves finding new voices. She was the co-founder of Knightsbridge Publishing Company with offices in New York and Los Angeles. In 1993 she became partners with Dorris Halsey of The Reece Halsey Agency, founded in 1957. She opened Reece Halsey North in 1995 and in 2009 the agency became Kimberley Cameron & Associates. She resides and works from Tiburon, California and France.

Georgia Hughes is editorial director at New World Library, where she acquires and edits nonfiction books in the areas of animals, spirituality, personal growth, sustainable business, mindfulness, health, and women’s issues. Before joining New World Library, Georgia worked as a bookseller (independent bookstores), at Harper San Francisco (now Harper One) and Prima Publishing, and as a freelance editor. New World Library’s list includes the Collected Works of Joseph Campbell, The Power of Now by Eckhart Tolle, and many other excellent books.

D.P. Lyle is the Macavity and Benjamin Franklin Silver Award winning and Edgar, Agatha, Anthony, Scribe, Silver Falchion, and USA Best Book Award nominated author of both non-fiction and fiction (the Samantha Cody, Dub Walker, and Jake Longly thriller series and the Royal Pains media tie-in series). Along with Jan Burke, he is the co-host of Crime and Science Radio. He has served as story consultant to many novelists and the screenwriters of shows such as Law & Order, CSI: Miami, Diagnosis Murder, Monk, Judging Amy, Peacemakers, Cold Case, House, Medium, Women’s Murder Club, 1-800-Missing, The Glades, and Pretty Little Liars.

Webinar: A Global Approach to Grey Market Issues: Solutions and Remedies in Europe and in the US

Thursday, November 17, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit

REGISTER TODAY

The grey market–or parallel import–is typically defined as the unauthorized importing of a genuine product either intended for a different market or through unauthorized channels. Goods that flow through the grey market can have a staggering impact on the revenue, image, reputation, organization or distribution networks of a company.

Against the backdrop of increased globalization and ubiquitous international exchanges, this webinar will offer a brief outline of the approach to grey market issues in Europe and in the US and suggest some of the tools that can be used by brand owners to combat the grey market from a global perspective.

Moderator: Pete Bromaghim
Speakers: Béatrice Martinet and Richard Nelson

Béatrice Martinet is special counsel at Sideman Bancroft whose practice focuses primarily on intellectual property litigation, arbitration and transactional work for clients in a wide range of sectors, including in the computer, technology, software, publishing, pharmaceutical, food and beverage, and fashion industries.

Richard Nelson is a partner at Sideman Bancroft who specializes in IP and fraud enforcement, with a focus on complex commercial litigation and internal investigations. Mr. Nelson has extensive jury trial experience in federal and state courts, having tried 32 cases to jury verdict.

Webinar: Managing Influencers and Consumer Content on Social Media

Tuesday, November 22, 2016, 12 noon - 1 p.m.
This program offers 1 hour of participatory MCLE credit
Presented by the In-House Counsel Interest Group

REGISTER TODAY

The use of endorsements and testimonials has become a marketing staple. Brands can leverage an influencer's network and reputation to promote its products and services and use social media to solicit consumer endorsements and encourage consumer interaction. While popular and effective, the use of endorsements and testimonials is replete with legal issues. When do endorsements invite FTC scrutiny? How much responsibility or control do brands actually have? Where have others crossed the line and what lessons have we learned from recent enforcement? This presentation will discuss these issues and provide practical guidance for managing risk.

Speakers: Monique Bhargava

Monique Bhargava is an associate in the advertising, marketing, and privacy group at Winston & Strawn. She advises clients in a broad spectrum of industries with respect to advertising, consumer promotions/marketing, trademark, copyright, data privacy, domain name, and other intellectual property matters relating to the entertainment and media sector. Ms. Bhargava has also served as an adjunct professor at the University of Illinois - College of Law, where she has taught on the law of advertising and promotions

Webinar: M&A-Friendly Technology License Agreements

Wednesday, November 30, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

Maximizing shareholder value may mean selling the company or its intellectual property. Ensuring that the company's outbound license agreements are M&A-friendly is a paramount objective for tech company counsel. It's especially important to appreciate the unique challenges posed by an exit in the form of an asset purchase, in which the buyer leaves the seller's customer licenses in place after closing. This webinar explores those aspects of technology license agreements that are conducive to such an exit, and those aspects that are not.

Speaker: Sean Hogle

Sean Hogle is Vice Chair of the Licensing Interest Group of the IP Section, managing partner and founder of Sean Hogle PC (epiclaw.net), and the CEO/Founder of Redline (redline.net), an exclusive collaboration environment for lawyers. For more than 20 years, Sean has practiced in the areas of technology, intellectual property, and commercial law for technology ventures worldwide.

Webinar: Intellectual Property Transactions in Israel

Monday, Decenber 5, 2016, 12 noon - 1 p.m.

This program offers 1 hour participatory MCLE credit.
Presented by the Intellectual Property Law Section, Licensing Interest Group and the International Interest Group

REGISTER TODAY

Technology and intellectual property are a significant percentage of Israel’s exports. This program will address the negotiation of transactions involving intellectual property developed in Israel or held by Israeli entities. Topics include: (1) aspects of Israeli commercial, contract and tax law significant to intellectual property transactions, (2) the role and regulations of the Israel Innovation Authority, and (3) transactions involving intellectual property developed at Israeli research, academic and medical institutions.

Speaker: Eli Greenbaum

Eli Greenbaum is a partner at Yigal Arnon & Co., one of Israel’s oldest and largest law firms. Eli’s practice focuses on the commercial representation of technology companies with an emphasis on intellectual property and technology-related transactions, and Eli has published widely in those areas. Eli received his M.S. in Applied Physics from Columbia University and his J.D. from Yale Law School. Prior to joining Yigal Arnon & Co., Eli clerked for Justice Miriam Naor of the Supreme Court of Israel and Judge David Cheshin of the District Court of Jerusalem, and worked for a number of years at Cleary, Gottlieb, Steen & Hamilton in New York.

Webinar: Using Surveys and Market Research in IP Litigation

Tuesday, December 6, 2016, 12 noon - 1 p.m.

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

REGISTER TODAY

Surveys and other market research are increasingly used by courts in assessment of intellectual property damages. This webinar discusses a variety of survey and complimentary market research methods, how they have been used in patent and trademark cases, some guidelines for admissibility, and approaches for validating results.

Moderator: Anne-Marie Dao
Speakers: Peter Hess and Anjali Oza

Peter Hess is a Vice President at Analysis Group who specializes in the application of microeconomic theory and analytical methods in litigation, business, and policy contexts. He consults on intellectual property, antitrust, securities/finance, policy, regulatory, and general business matters. Dr. Hess’s work includes assessment of liability and loss causation; estimation of commercial damages, lost profits, and reasonable royalties; analyses of financial, insurance claims, and Internet traffic data; valuation; simulation and forecasting; cost-benefit analysis; and policy evaluation.

Anjali Oza is a Manager at Analysis Group and specializes in the application of economic, statistical, and market research methods to litigation and strategy matters. Dr. Oza is an expert in designing qualitative and quantitative surveys, including conjoint analysis and experiments, involving consumer goods in the context of patent litigation, false advertising, trademark infringement, and class action. She has also worked on estimating damages in health care provider-payor disputes, intellectual property, breach of contract, and employment discrimination cases.

News

Amended TTAB Rules Published in Federal Register 11/7

Amended TTAB Rules Published in Federal Register. Go here for link and for chart summarizing changes.

Copyright Office Seeks Additional Comments for Section 1201 Study

The U.S. Copyright Office is conducting a study to evaluate the operation of section 1201 of title 17 and has reviewed public input from the first round of written comments and from roundtable participation. To further aid the analysis, the Copyright Office is now soliciting additional written comments on a subset of issues. These include proposals that would update the statute’s permanent exemption framework and amend the anti-trafficking provisions to better enable intended beneficiaries of exemptions to engage in lawful circumvention activities, as identified further in the September 27, 2016, Federal Register notice. You may access the Federal Register notice here. Written comments are to be submitted electronically using the regulations.gov system. Specific instructions for submitting comments are available on the Copyright Office website at http://copyright.gov/policy/1201/commentsubmission/. Comments are due on or before October 27, 2016. Reply comments are due on or before November 16, 2016.

Copyright Office Technical Amendments

The U.S. Copyright Office published a Notice of Proposed Rulemaking, seeking public comments on proposed technical amendments to its regulations governing registration, recordation, licensing, and other services the Office provides. The amendments are designed to improve the quality of the Office’s regulations by updating cross-references, replacing outdated terminology, reflecting structural changes to the Office and its senior management, eliminating expired our obsolete provisions, and correcting nonsubstantive errors. While these amendments are intended to be technical in nature, out of an abundance of caution, the Office is publishing the proposed regulations for public comment.

The Notice of Proposed Rulemaking and instructions on how to submit a comment are available here. Written comments must be received no later than November 2, 2016, at 11:59 p.m. Eastern Time.

USPTO Seeking Comments on Proposed Patent Fee Adjustments

The United States Patent and Trademark Office issued a notice of proposed rulemaking proposing to set or adjust certain patent fees, as authorized by the Leahy-Smith America Invents Act. The proposed fees are projected to recover the aggregate estimated cost of the USPTO’s patent operations, Patent Trial and Appeal Board operations, and administrative services. The last major patent fee setting using AIA authority became effective in March 2013. As part of the USPTO’s continued commitment to fiscal responsibility, financial prudence and operational efficiency, the Office comprehensively reviews fee levels on at least a biennial basis. The fee review process incorporates a thorough evaluation of the existing fee schedule as well as research and analysis on potential revisions to the schedule.

The Office welcomes comments on both the individual patent fee proposals and the rulemaking goals and objectives. Comments should be sent by email addressed to: fee.setting@uspto.gov. Comments may also be sent by email to the Federal eRulemaking Portal at http://www.regulations.gov. The Office will consider and respond to all comments received, during the public comment period, in the final rule, which the Office expects to publish in 2017.

Congratulations to the 2016 IP Vanguard Award Recipients

The Executive Committee of the IP Law Section is pleased to honor outstanding legal professionals who are spearheading new developments in the world of intellectual property. The IP Vanguard Awards will be presented during a special Awards ceremony at the 2016 IP Institute, the flagship event of the Intellectual Property Law Section.

Join us at the 2016 Intellectual Property Law Section Annual Institute on November 10-11 at the Hyatt Santa Barbara. The 2016 honorees are:

In-House Counsel

image of Fred Von Lohmann

Fred Von Lohmann
Legal Director, Copyright
Google, Inc.

Judiciary

image of  Honorable Ronald M. Whyte

Honorable Ronald M. Whyte
United States District Court
Northern District of California

Private Practice

image of Heather J. Meeker

Heather J. Meeker
Technology Transactions Partner
O’Melveny & Myers LLP

Academic or Public Policy

image of Kevin J. Greene

Kevin J. Greene
Professor of Law
Thomas Jefferson School of Law

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
CLE

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

Ethical and Privacy Challenges in Internet Policy

Drawing from his many high profile roles in the business and legal community, Chris Kelly, former Chief Privacy Officer and General Counsel at Facebook, will provide a unique exploration of many of the ethical and privacy challenges that arise from establishing and complying with internet policy.

1 Participatory MCLE Credit in Ethics
More Information

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 Editor of Inevitable Disclosure, Barbara Friedman.