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

Live Programs

State Bar of California Annual Meeting

My Annual MeetingStill Time To Register!

The State Bar of California 88th Annual Meeting
October 8-11, 2015
Anaheim, California

The State Bar of California returns to sunny Anaheim for the 2015 Annual Meeting. The Annual Meeting is a multiday showcase of continuing legal education courses, celebrity speakers, and noted legal scholars. Each day gives you several choices of courses and special events.

The Annual Meeting registration fee is structured to make it more affordable to attend. You can select either a Full Meeting Pass or a 2-Day Pass. Special fees are available for Young Lawyers and New Admittees. September 14 is the deadline for the lowest fee.

More than 100 programs are planned for the Annual Meeting, including these from the IP Section:

  • Program 41: Lions, Tigers & Friends: Social Media Case Law Review
  • Program 66: Intellectual Property Law: Patent, Trademarks, Copyrights and Trade Secrets
  • Program 74: Navigating the Process: Best Practices in Clearing, Filing & Managing Trademarks
  • Program 75: Intellectual Property Law: Hot Topics in Data Protection
  • Program 86: Intellectual Property for Non-IP Attorneys: Spotting and Dealing With IP Issues

For more information, see The State Bar of California Annual Meeting.

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

You can now REGISTER ONLINE for this program. Online registration will remain open until the pre-registration deadline, November 6.

Please join us as we explore the outer limits of intellectual property in this content-packed conference that we have fondly named "IP: The Final Frontier."

More information is available at IP Institute.

Webinars

Webinar: IP Considerations for International Business Transactions

Friday, October 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.

Technological developments and the increased ease of transportation and communication have opened up channels for international trade for California businesses. While the opportunities have expanded, companies need to learn how to navigate intellectual property rights and limitations to stay in business and not run afoul of foreign laws. Experiences with domestic and international clients to provide an overview of considerations for professionals with clients intending to operate outside the US or for foreign companies entering the US market will be shared.

Speakers: Soyeun D. Choi has run her own office since 2000, focusing on business transactions and intellectual property. Her clients originate locally and globally, with interests in Korea, China, Japan, Egypt, and Europe, in a variety of industries.

Moderator: Rebecca Chen

Webinar: Slaying the Dragon: Understanding and Effectively Managing the Use of the Model Order on E-Discovery in Patent Cases

Tuesday, October 27, 2015, 12 noon - 1 p.m.

Presented by the Intellectual Property Law Section, Patent Interest Group

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

Many times parties stipulate to the Model Order on E-Discovery in patent cases, only to discover later on that they now need to negotiate a multitude of unanticipated issues. This program will discuss areas of continuing concern and include some practice pointers on how to evaluate E-Discovery issues early on and how to best utilize the Model Order, in conjunction with other available tools, in order to cost-effectively and judiciously manage E-Discovery in patent cases.

Speaker: Mieke K. Malmberg is a partner in Glaser Weil's Intellectual Property group. She received her bachelor of science degree in Biochemistry and Cell Biology from U.C. San Diego and her J.D. from U.C. Hastings College of the Law. Ms. Malmberg has more than fifteen years of experience litigating and advising clients on patent, trademark, copyright and trade secret disputes throughout the United States, as well as Section 337 investigations before the International Trade Commission. She is an expert in handling patent litigation matters from early case evaluation through appeal and has handled multiple cases involving complex electronic discovery issues and extremely high volumes of electronic data.

Moderator: Sanjesh 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.

Webinar: Negotiating Data Licenses

Thursday, October 29, 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.

This program will cover the most heavily negotiated clauses in data license agreements. Topics include:

  • Ownership, license scope, and permitted and restricted uses
  • Privacy and data security
  • Warranties
  • Indemnities
  • Limitation of liability

Speakers:

  • Josh Fisher, CIPP-US represents start-up, small, and mid-market businesses in transactional and corporate matters, with focus on complex supply-chain and intellectual property agreements. Prior to starting his solo practice in 2009, Josh co-founded a supply-chain negotiations group at Cisco, served as a Managing Attorney in Cisco's legal department, and was a Director of Legal Affairs at Discovery Communications, the producers of Discovery Channel and Animal Planet. Josh began his legal career as a corporate and securities attorney at the law firm of Wilmer, Cutler & Pickering (now WilmerHale). Josh is a graduate of Columbia University School of Law and holds an MS in Information Technology and Telecom from Johns Hopkins University.

  • John Pavolotsky, CIPP-US is Senior Attorney at Intel Corporation, supporting its Technology and Manufacturing Group. Prior to joining Intel, John was Of Counsel in the Intellectual Property and Technology Group of Greenberg Traurig LLP. John is Co-Vice Chair of the IP Section's Licensing Interest Group. He earned his JD from the U.C. Davis School of Law, where he is also on the alumni Board of Directors, and his MBA from the Haas (U.C. Berkeley) School of Business. John speaks and writes frequently on technology law issues.

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

Interest Group Meetings

Licensing Interest Group

Friday, October 9, 2015, 12 noon

Monthly "All Hands" Licensing IG conference call. We'll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics.

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

Please note: Our monthly calls are the 2nd Friday of every month.

News

Update from the Technology, Internet, and Privacy Interest Group

Written by Hannah Poteat

FTC Ruling in Wyndham Hotels and Resorts

The long-awaited Third Circuit ruling in the FTC's case against Wyndham Hotels and Resorts came down recently, holding that the FTC may bring unfair trade practice suits against organizations that fail to reasonably protect and secure consumers' personal information.

Wyndham made three arguments: first, that the FTC had not clearly defined "unfairness;" second, that Congress did not grant the FTC specific jurisdiction over data security; and third, that the FTC has not provided fair notice about which security practices it considers unreasonable or unfair. First, while Wyndham argued that some injury to consumers must occur before its conduct could be deemed unfair, the court clarified that "the FTC Act expressly contemplates the possibility that conduct can be unfair before actual injury occurs." Second, the court pointed out that the numerous privacy and data security laws passed by Congress specifically mention FTC enforcement.

Finally, Wyndham argued that it lacked fair notice of the FTC's enforcement standards, which is required to have to satisfy due process. However, the court indicates that in regard to civil statutes that regulate economic activities, "a party lacks fair notice when the relevant standard is "so vague as to be no rule or standard at all." Additionally, regulatory agencies are generally free to adopt any reasonable construction of rules. Therefore, the court held that Wyndham "was not entitled to know with ascertainable certainty the FTC's interpretation of what cybersecurity practices are required." The question was, rather, "whether Wyndham had fair notice that its conduct could fall within the meaning of the statute."

By now, we should all be aware of the fact that the FTC regulates privacy and data security. We should all be aware that the FTC has adopted a broad authority to regulate as such. The Third Circuit ruling supports the FTC's broad authority, so nothing changes for our daily practices.

Breaking News from the Technology, Internet, and Privacy Interest Group

The Ninth Circuit released its decision in Lenz v. Universal yesterday morning, September 14, 2015,-- the case about the baby dancing in his kitchen to Prince's "Let's Go Crazy." It's a ruling that gives a lot of gifts all around.

The main takeaway is the court's holding that fair use is a right granted by the Copyright Act, and is wholly authorized by the law. It is not an affirmative defense to infringement, despite often being labeled as such for procedural reasons ("That fair use may be labeled as an affirmative defense due to the procedural posture of the case is no different than labeling a license as an affirmative defense for the same reason.") It is, the court said, a mistake to conflate it with those affirmative defenses that excuse impermissible conduct; fair use is a wholly authorized and lawful use. Therefore, for purposes of the DMCA, a copyright holder must consider fair use before sending a DMCA takedown notice.

Because Universal failed to consider fair use before sending its takedown notice, the court held to the Rossi standard and imposed a subjective good faith belief standard in considering whether or not it knowingly misrepresented (for §512(f) purposes) that it had formed a good faith belief that Lenz's video did not constitute fair use. In Rossi, the court held that "[a] copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake. Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner." The court reaffirmed this holding, saying:

"To be clear, if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under § 512(f). If, however, a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder's belief even if we would have reached the opposite conclusion. A copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to § 512(f) liability."

The court didn't leave copyright holders totally exposed, and in fact, did not demand human review of all content before sending DMCA takedowns. It discussed the implementation of computer algorithms as a "good faith middle ground for processing a plethora of content while still meeting the DMCA's requirements to somehow consider fair use." It set out guidelines for sufficient consideration of fair use in automated takedown programs, such as where

  1. the video track matches the video track of a copyrighted work submitted by a content owner;
  2. the audio track matches the audio track of that same copyrighted work; and
  3. nearly the entirety . . . is comprised of a single copyrighted work.

Finally, the court holds that 512(f) does not require a plaintiff to show that she has suffered any actual monetary losses before she can recover damages. In short, the court describes the DMCA as "a statutorily created intentional tort whereby an individual may recover nominal damages for a knowingly material misrepresent[ation] under this section [512]." Therefore, 512(f) plaintiff may seek any damages suffered as a result of the misrepresentation.

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

Copyright Office Calendar

Due Tomorrow! Copyright Office Extends Period for Reply Comments in Notice of Inquiry Regarding Copyright Protection for Certain Visual Works:  The Copyright Office has published a Federal Register notice extending the deadline for public reply comments that reply to initial comments submitted in connection with the Office’s April 24, 2015, Notice of Inquiry on Copyright Protection for Certain Visual Works. Reply comments are now due on October 1, 2015.  For more information, please see http://copyright.gov/policy/visualworks/.

The Copyright Office is also still accepting comments on its Orphan Works and Mass Digitization Report.  The full report is available at http://1.usa.gov/1dd1W02. The Notice of Inquiry is available http://1.usa.gov/1cXjGie. Written comments are due on or before October 9, 2015.

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

This program will cover the following topics:

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 will discuss them based on real experience to date.

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.