The 40th IP Institute,November 12-13, 2015, Westin Rancho Mirage.  The Final Frontier.
Inevitable Disclosures
October 30, 2015

Live Programs

Registration Now Open! The 2015 Intellectual Property Institute and the 7th Annual IP Vanguard Awards

Westin Mission HillsThe 2015 Intellectual Property Institute and the 7th Annual IP Vanguard Awards will be held:

Thursday-Friday
November 12- 13, 2015
The Westin Mission Hills Golf Resort & Spa 71333
Dinah Shore Dr
Rancho Mirage

The IP Section of the State Bar of California welcomes you to join us for the launch of our 40th Annual IP Institute, IP: The Final Frontier. Keynoted by director and entertainment lawyer Adam Nimoy, the conference features panels that will explore the outer limits of intellectual property: the Darknet, the use of drones, cryptocurrencies, the future of wearable tech, and augmented reality. There will even be a demonstration of drone technology.

You can now REGISTER ONLINE for this program. Online registration will remain open until November 6.

More information is available at IP Institute.

SAVE THE DATE! IP Protection and Social Media Issues in the Workplace

The Intellectual Property Law Section of the State Bar of California is presenting a new full-day conference on IP Protection and Social Media Issues in the Workplace. The conference will be held on January 19, 2016, at the State Bar Offices in San Francisco.

In California especially, the workplace is often the laboratory where creative ideas are hatched and innovative products are launched. While striving to create environments where innovation and creativity thrive, successful companies must also ensure that appropriate safeguards and employee protocols are in place to protect intellectual property.Employers also face challenges in complying with social media privacy rights and laws affecting employee participation in promotional activities. Complicating the entire picture are the increasingly fluid borders of where and when work is accomplished.

We have assembled a group of leading intellectual property and employment attorneys from public agencies, private law firms, and distinguished law schools to address the important intellectual property and social media issues that arise in today's workplace.

Our keynote speaker is Professor Mark Lemley, Director of the Stanford Program in Law, Science and Technology.

Conference panels will focus on the following topics and offer practical advice for attendees from both the business world and the legal profession:

  • Ownership and Clearance of I.P. in the Workplace
  • I.P. Issues You Didn't Think You Had
  • Keynote: Professor Mark Lemley, Director of the Stanford Program in Law, Science and Technology
  • Testimonials and Endorsements: How to Properly Involve Employees
  • "Work Made for Hire" Clauses: Independent Contractor or Statutory Employee Under California Law?
  • Privacy Issues in the Workplace and the Internet of Things
  • Addressing I.P. Theft in the Workplace

Webinars

Webinar: FRAND Developments in Japan

Monday, November 23, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, International Interest Group

This program offers 1 hour of participatory MCLE credit. You must REGISTER IN ADVANCE in order to participate.

In the wake of Apple v. Samsung and the recent draft amendments regarding FRAND agreements under the Japan Antimonopoly law by the Japan Fair Trade Commission (JFTC), the Japan patent licensing system has taken a very pro-licensee stance. Specifically, the new draft amendment now includes provisions effectively barring patentees from obtaining injunctive relief against third party licensees who are "willing to take a license under FRAND terms." To allow injunctive relief against a wiling licensee would be an unfair trade practice. Furthermore, a negotiating third party licensee is still "willing" if they have the demonstrated intent of entering a licensing agreement, regardless of whether they challenge validity or assert non-infringement of the patent. The only relief available to patentees against infringers of their SEP is monetary damages in an amount equivalent to a "reasonable royalty rate."

Speaker: Aki Ryuka is the principal of RYUKA IP Law Firm. He is a Japan patent attorney, certified to practice IP litigation in Japan and an attorney at law in California. Mr. Ryuka specializes in electronics, semiconductors, software, data communication, and radio communication. Mr. Ryuka began his career as an electrical engineer at Canon Inc. Later, he joined Tani & Abe. From 1995 to 1998, Mr. Ryuka worked in the Washington, DC office of Cushman Darby & Cushman (now Pillsbury). He has lectured extensively in Japan and abroad on IP topics and has published numerous articles including detailing RYUKA's invention consulting services (Patent Visualization).

Moderator: Rebecca Chen

Webinar Replay: Legal Ethics for Non-litigators in the Client Lifecycle: Part 1--Finding Clients

Wednesday, December 2, 2015, 12 noon - 1 p.m.

Presented Intellectual Property Law Section, Licensing Interest Group; Solo & Small Firm Section; Business Law Section

This program offers 1 hour of participatory MCLE credit including 1 hour in Legal Ethics. You must REGISTER IN ADVANCE in order to participate.

While all lawyers often face the same ethical issues, transactional lawyers often need guidance tailored to their non-litigation practice. Through a series of hypotheticals, ethical rules as they apply through the "life cycle" with clients, starting in this Part 1 with finding clients will be explained.

Speakers:

  • James C. Roberts III is the managing principal of Global Capital Law Group PC and its consulting arm, Global Capital Strategic Group, advising on technology, international and transactional matters. Clients range from large corporations to start-ups in digital media, mobile, software, biotech and greentech. James is Chair of The State Bar of California IP Section's Licensing Interest Group. He frequently writes or speaks on startups and venture capital.

  • Megan Zavieh focuses exclusively on attorney ethics, providing limited scope representation to attorneys facing State Bar disciplinary action. She provides writes about ethics at California State Bar Defense, Lawyerist.com and AttorneyatWork.com. She practiced securities litigation for several top New York firms after clerking for the Honorable Evan J. Wallach at the US Court of International Trade.

    Megan earned her JD from Boalt Hall of the University of California, graduating Order of the Coif. She is admitted to the state courts and several federal district courts in California, New York, and New Jersey, as well as the United States Supreme Court.

Webinar Replay: Legal Ethics for Non-litigators in the Client Lifecycle: Part 2--Representing Clients

Wednesday, December 9, 2015, 12 noon - 1 p.m.

Presented Intellectual Property Law Section, Licensing Interest Group; Solo & Small Firm Section; Business Law Section

This program offers 1 hour of participatory MCLE credit including 1 hour in Legal Ethics. You must REGISTER IN ADVANCE in order to participate.

While all lawyers often face the same ethical issues, transactional lawyers and corporate lawyers often need guidance tailored to their non-litigation practice. Through a series of hypotheticals, ethical rules as they apply through the "life cycle" with clients, now concentrating on representing clients--e.g., conflicts will be explained.

Speakers:

  • James C. Roberts III is the managing principal of Global Capital Law Group PC and its consulting arm, Global Capital Strategic Group, advising on technology, international and transactional matters. Clients range from large corporations to start-ups in digital media, mobile, software, biotech and greentech. James is Chair of The State Bar of California IP Section's Licensing Interest Group. He frequently writes or speaks on startups and venture capital.

  • Megan Zavieh focuses exclusively on attorney ethics, providing limited scope representation to attorneys facing State Bar disciplinary action. She provides writes about ethics at California State Bar Defense, Lawyerist.com and AttorneyatWork.com. She practiced securities litigation for several top New York firms after clerking for the Honorable Evan J. Wallach at the US Court of International Trade.

    Megan earned her JD from Boalt Hall of the University of California, graduating Order of the Coif. She is admitted to the state courts and several federal district courts in California, New York, and New Jersey, as well as the United States Supreme Court.

Webinar: Exploration of the Proprietary Information and Inventions Agreement

Tuesday, December 15, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Licensing Interest Group

This program offers 1 hour of participatory MCLE credit. You must REGISTER IN ADVANCE in order to participate.

The PIIA is one of the most commonly used documents among tech ventures. This program will explore the document from an IP and employment law perspective. Topics include (1) the best definition of "Proprietary Information"; (2) ensuring preservation of the employer's work for hire status; (3) dealing with the double-patenting objection; (4) anti-raiding/anti-poaching clauses; (5) attack of the NLRB; and (6) employee indemnification.

Speaker Sean Hogle's law practice is focused primarily on technology ventures, such as software, telecommunications, visual effects, and Internet-related companies. Sean's more than twenty years of diverse legal experience make him well-suited to act as a virtual general counsel to his venture clients, specializing in startup legal imperatives, online terms of use, privacy issues, cross-border mergers and acquisitions, strategic alliances, intellectual property matters and technology licensing.

Sean Hogle is the Director of Programming of the Licensing Interest Group for the State Bar of California’s IP Section. 

Sean began his legal career with a large law firm in Denver, Colorado, where he represented numerous high technology enterprises. Eventually, Sean moved in-house with Sun Microsystems, where he became Assistant General Counsel. In this role, Sean was responsible for technology licensing and alliances for Japan and the Asia Pacific region, as an expatriate in Tokyo. He then joined the wireless and consumer software venture Aplix Corporation as General Counsel before starting his own firm in 2006.

Webinar: EU/US Privacy Law: With the "Safe Harbor" Closed, What Next?

Thursday, January 14, 2016, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Licensing Interest Group

This program offers 1 hour of participatory MCLE credits. You must REGISTER IN ADVANCE in order to participate.

When the Court of Justice of The European Union struck down the EU/US Privacy “Safe Harbor” it sent shockwaves through the US privacy community.  Thousands of US companies affected by the decision were faced with the challenge of finding an alternative basis for sharing data between the EU and the US. In this webinar you’ll have a chance to learn about the Court of Justice of The European Union’s decision. You’ll also walk away with practical tips on how to structure your clients cross border data sharing in lieu of safe harbors.

Speaker Francoise Gilbert focuses her practice on U.S. and global data privacy and security in a wide variety of markets. With more than 30 years of experience covering the entire privacy and security spectrum, she counsels clients on complex issues related to evaluating and strategically managing privacy, security, and e-business risks. READ MORE

Ms. Gilbert is the author of the leading two-volume treatise "Global Privacy and Security Law" which covers in depth the privacy and data protection laws of 68 countries on all continents. She has also written numerous chapters in collective works and has published hundreds of articles in peer-reviewed publications, professional journals and magazines on privacy, security, emerging technologies, compliance, cybercrime, outsourcing, workplace privacy, information law, data governance, Internet law, ecommerce, children protection, and comparative law.

Teri Karobnik, Moderator, is the Director of Communications of the Licensing Interest Group for the State Bar of California’s IP Section.

News

House Judiciary Committee to Make Two Stops in California

The House Judiciary Committee will continue the comprehensive copyright review with two listening tour stops in California.The House Judiciary Committee will travel to Silicon Valley on November 9th and Los Angeles on November 10th. More information here.

Silicon Valley PTO Officially Opens its Doors

Sophie Cohen (immediate past Chair, State Bar of California IP Section) and John Cabecca (Director, USPTO Silicon Valley Office)

Ribbon cutting, from l to r: John Cabeca (Director, USPTO Silicon Valley Office), Drew Hirshfeld (USPTO Commissioner for Patents), Congresswoman Zoe Lofgren (California 19th District), Michelle Lee (Undersecretary of Commerce and USPTO Director), Carl Guardino (President, Silicon Valley Leadership Group), Congresswoman Anna Eshoo (California 18th District), Sam Liccardo (Mayor, City of San Jose), Congressman Darrell Issa (California 49th District).

Champagne toast, from l to r: Sam Liccardo (Mayor, City of San Jose), Congresswoman Anna Eshoo (California 18th District), Carl Guardino (President, Silicon Valley Leadership Group), Congresswoman Zoe Lofgren (California 19th District), Chuck Reed (Former mayor, City of San Jose), Michelle Lee (Undersecretary of Commerce and USPTO Director), Congressman Darrell Issa (California 49th District), Congressman Mike Honda (California 17th District)

 

Court Awards over $100,000 to Pro Bono Copyright Defendant in City of Inglewood v. Teixeira

By Matthew A. Neco

The City of Inglewood, California brought a copyright infringement lawsuit against one of its residents, Joseph Teixeira. Teixeira had taken portions of videos of Inglewood City Council meetings and uploaded them to YouTube with criticism and commentary superimposed over portions of the videos.

The City claimed it had a copyright interest in the video recordings and alleged that Teixeira infringed its copyright by copying the recordings and posting them without authorization. The Court rejected both premises of the City's complaint and dismissed the action with prejudice. The Court determined that the City could not, as a matter of law, assert a copyright interest in the recordings of the City Council's meetings without California having enacted a law specifically permitting California governmental entities to claim copyright in works of authorship. And even if the City could claim copyright, "Defendant's conduct fell squarely within the purview of the fair use doctrine and was thus shielded from copyright liability."

The Court remarked that it "can scarcely conceive of works that are more appropriately protected by the fair use doctrine and §107 than the Teixeira videos." After finding that "[e]very factor used to determine whether an award of fees is appropriate in a copyright infringement action favors Defendant," the Court then granted Defendant's request to recover attorneys' fees shaving just a bit off of what was requested.

Inglewood argued, among other things, that because Teixeira's counsel took the engagement on a pro bono basis and did not charge the client Teixeira should not be permitted to recover fees. The Court rejected this argument, stating the fact that "Defendant was represented on a pro bono basis is of little import to the propriety of the attorneys' fees award." It continued, "Preventing litigants who are represented by pro bono counsel from receiving fees may decrease the future availability of pro bono counsel to impecunious litigants, who may, in the absence of pro bono representation, abandon otherwise meritorious claims and defenses. This runs counter to Fogerty's instruction that courts should exercise their discretion under §505 so as to encourage the litigation of meritorious claims and defenses," citing John Wiley & Sons, Inc. v. Kirtsaeng, 605 F. App'x 48, 50 n. 2 (2d Cir. 2015), which cited Fogerty v. Fantasy, Inc., 510 U.S. 517, 527 (1994).

The Court then examined various factors to determine that it was appropriate to award fees.

1st Factor in Defendant's Favor: Defendant's overwhelming success on the merits. Court found that none of Inglewood's cases cited in opposition to this factor were apposite.

2nd Factor in Defendant's Favor: Inglewood's claims were objectively unreasonable. "Prior to bringing this action, the City should have closely scrutinized the only controlling authority on this issue--County of Santa Clara v. Superior Court, 170 Cal. App. 4th 1301, 89 Cal. Rptr. 3d 374 (2009)--and at least discussed the case with Defendant or his counsel." That case held that in the absence of "an affirmative grant of authority," a California municipality may not hold or enforce a copyright in its own works of authorship such as the City Council videos.

The Court stated that "Even if the City were permitted to hold a protectable copyright under the Copyright Act, its claims would still fail because Defendant's videos are textbook examples of fair use works. Defendant produced "quintessential transformative works for the purpose of criticism and commentary on matters of public concern." The nature and purpose of Defendant's videos should have given the City at least some pause and prompted it to conduct further research into the merits of its claims. Indeed, when a fair use defense is that strong, courts view the copyright infringement claim as 'objectively unreasonable.'" [Internal citations omitted.]

3rd Factor in Defendant's Favor: The City's motivation in bringing suit. The Court observed that since the City is prohibited under California law from selling the videos for more than the direct costs of duplication, it clearly did not bring the suit in order to protect its commercial interests in the videos. "The City's most plausible purpose," the Court surmised, "was to stifle Defendant's political speech after he harshly criticized the City's elected officials. As such, this factor weighs heavily in favor of an attorneys' fees award."

4th Factor in Defendant's Favor: Deterrence of future frivolous and meritless actions.

5th Factor in Defendant's Favor: Goals of the Copyright Act are furthered when transformative works such as the videos involved here are protected from unreasonable claims.

Having determined that all factors weighed heavily in favor of granting attorneys' fees the court reviewed the arguments for and against the fees requested, and found that the hourly fees requested were reasonable and fair. The Court did think that a few less hours could have been spent on the motion to dismiss, and so subtracted 45 hours from the requested 170 hours, rejecting Inglewood's assertion that the motion should have taken no more than 20 hours to prepare.

Inglewood was represented by JoAnna M. Esty of Majesty Law Group, PLC. Teixeira was represented by Thomas R. Burke, Dan Laidman, and Diana Palacios of Davis Wright Tremaine LLP.

ECJ Declares EU/US Safe Harbors Invalid

By Matthew A. Neco and Teri Karobonik

Last week the European Court of Justice, the highest appellate level court in the EU (akin to the US Supreme Court) declared invalid the "Safe Harbor" agreement allowing US companies to transport the data of EU citizens outside of the EU. The court found that the protections offered by the Safe Harbor regime were insufficient to protect the privacy of EU citizens because they could be easily circumvented by US national security interests; EU citizens had no meaningful way to protect their data from what it characterized as a kind of abuse, and the Safe Harbors did not allow EU citizens any meaningful recourse if their privacy rights were violated in this way. The full ECJ decision can be found here.

Although this ruling will not take effect immediately, it will allow courts in individual EU member states to invalidate the use of the Safe Harbor regime in their respective states, thereby potentially exposing to liability US companies that had relied on Safe Harbor certification.

There are countless smaller US companies that are not certified as being compliant with the now judged invalid Safe Harbor agreement. Many rely upon provisions in their terms, EULAs, privacy policies or statements that basically disclose that they do not, or may not, comply with the privacy laws of many EU countries and that users agree that that is OK.

Many of the larger entities that have relied upon the Safe Harbor Directive and "certification" traditionally did not include such disclosures / disclaimers / waivers / agreements, believing they were unnecessary because they had Safe Harbor certification. Putting aside whether users actually "agree," including by browser-wrap, to have their private data transferred out of their country, and be treated in a way that might be less protective than the laws of their country provide; it's still unclear if such agreements are unenforceable or void as against public policy in the EU. Are US entities with such disclosures better off than the "Safe Harbor Certified" entities?

One potential solution is to renegotiate the Safe Harbor regime to further ensure the privacy of EU Citizens. Another potential solution furthers reliance on the lengthy and complex process of adopting "binding corporate rules," which were rules designed by the EU Article 29 Working Party to make it easier to transfer data across borders in the US and EU so long as the data remained inside the company.

Congratulations to the Recipients of the 2015 IP Vanguard Awards!

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 2015 IP Institute, the flagship event of the Intellectual Property Law Section.

Join us at the 2015 Intellectual Property Law Section Annual Institute on November 12-13 at the Westin Mission Hills in Rancho Mirage. 2015 IP Institute information will be posted in the near future.

The 2015 honorees are:

Mei Lan StartIn-House Counsel

Mei-lan Stark
Senior Vice President, Intellectual Property
Fox Entertainment Group, USA

Margaret McKeownJudiciary

Honorable M. Margaret McKeown
United States Court of Appeals for the Ninth Circuit

Jonathan PinkPrivate Practice

Jonathan Pink
Lewis Brisbois Bisgaard & Smith

Dan
            BurkAcademic or Public Policy

Dan L. Burk
Chancellor's Professor of Law
University of California , Irvine School of Law


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 Summer issue, you can earn credit for the article  A Closer Look at Section 1202 Litigation and the Developing Jurisprudence of Copyright Management Information by Austin Ray Phillips. 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 New 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

Online Catalog

Featured CLE Program from Our Catalog!

Online
CLEDid you miss this program? It's available in our online catalog for CLE credit!

2015 Adults Only IP: Growing Like a Weed: IP Law for Cannabis Businesses

The growing, processing and distribution of marijuana is already legal to one degree or another in about half of the 50 states + Washington, D.C.; it is already a billion-dollar a year business and is projected to grow to $8 billion (or more) by 2018. And that doesn't include the ancillary businesses that support the industry: software, lighting & moisture control equipment, accounting and legal services, advertising, etc. Like every emerging industry since the founding of the country, with growth comes a host of IP issues. This panel discusses them based on real experience.

1 hour participatory MCLE credit
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 Editors of Inevitable Disclosure, Barbara Friedman and Aurelia Schultz.