2023 IP Institute

1 Hour MCLE

IP valuation is a critical component of IP transactions, IP portfolio management, IP enforcement, and other situations involving the creation and monetization of IP assets. And yet, IP valuation is often misunderstood by IP holders and the lawyers that are tasked with carrying these types of activities. This panel of IP valuation and monetization experts will shed light and share their experience as it relates to the basics of IP valuation, covering topics including: 1. Why is IP valuation relevant to the IP practitioner? 2. IP valuation fundamentals: How are various IP assets being valued (patents, trademark, etc.)? 3. Examples of use cases when IP valuation is used (e.g., licensing, funding collateral, M&A, strategic planning, enforcement, and litigation damages, etc.) 4. Key IP valuation mistakes to avoid!

Speakers:

• Efrat Kasznik, President, Foresight Valuation Group, LLC  
• Evan Loker, Director, CONSOR®
• Yvonne Lee, Director of IP Investment and Corporate Counsel, Parabellum Capital LLC 

1 Hour MCLE

The last couple of years have seen a rush by brands to extend their IP rights into virtual environments and digital markets, sparking a flurry of related litigation. This panel will discuss strategies for brands to protect and enforce their IP in the realm of NFTs and other digital spaces, including through the lens of the issues presented in the pretrial motions and trial earlier this year in Hermès v. Rothschild, currently on appeal in the Second Circuit.

Speakers:

• Rhett Millsaps, Managing Member, Lex Lumina PLLC
• Melanie Howard, Partner & Chair, Luxury Brands & IP Protection

1 Hour MCLE

The “safe harbor” of 35 U.S.C. § 271(e)(1) protects companies developing FDA-regulated products from patent infringement under certain circumstances. However, the boundaries of safe harbor can be murky and there has been confusion about the extent of its application, including for research tools. This presentation will discuss the implications of the “safe harbor” in the context of drug development.

Speakers:

• Chad Shear, Partner, Cooley LLP
• William Raich, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

1 Hour MCLE

Generative AI has raised a number of thorny copyright questions – both concerning. (1) Infringement and fair use (regarding training data, the model, outputs. (2) Copyright ability (that is, whether materials created using generative AI are protected by copyright). Join us as Heather Whitney of Morrison Foerster’s Technology Transactions Group and member of the firm’s AI Steering Committee provides an overview of these topics and where we are now.

Speaker:

• Heather Whitney, Morrison Foerster
• Angela Dunning, Cleary Gottlieb Steen & Hamilton

1 Hour MCLE

In patent litigation, best practices often evolve in response to changes in the patent law and rules of practice, sometimes resulting in dramatic shifts. Being aware of current trends is essential for pursuing the best litigation strategy. The panelists will consider and discuss recent patent litigation trends, and how changes in the law and local practice are affecting litigation decisions and outcomes in U.S District Courts and at the PTAB.

Speakers:

• Jonah Probell, Member, National Association of Patent Practitioners
• Andrew Klein, Counsel, Perkins Coie LLP
• Christopher McKinley, Associate, Intellectual Property Litigation, Skadden, Arps, Slate, Meagher & Flom LLP and Affiliates

1 Hour MCLE

The great Black performer Ruth Brown is universally recognized as an innovator of rhythm and blues. Brown’s prodigious talent fueled record sales so impressive that her record label, Atlantic Records was dubbed “the House That Ruth Built.” Yet Ruth, like so many other African American artists, found herself deprived of compensation, even as her record label raked in profits. A trend prevalent among famous black blues, jazz, doo wop and rock artists of the 40’s and 50’s. While the problem seems to sound in inequitable contractual practices, U.S. Copyright law is also squarely culpable. Copyright law does not protect performances, except to the extent the performance is fixed in a sound recording that is typically not owned by the performer.

The inequities highlighted by the House that Ruth Built continue in the modern era amidst a frenzy of catalog acquisitions. The rise of AI and “deep fakes” has spurred calls for a federal right of publicity statute, with a focus on protection of voice. This opening presents an opportunity for redress for Black legacy performers.

Speaker:

• Kevin J. Greene, John J. Schumacher Chair, Professor of Law Southwestern Law School

1 Hour MCLE

The explosion of privacy laws nationwide makes unpacking the never-ending stream of acronyms (never mind the law itself) an immense challenge. Join Jon Lurie (Law Offices of Lurie and Ferri), and Chelsea Rissmiller (DLA Piper) for a thoughtful overview of the new state privacy laws (beginning with the final California Consumer Privacy Act regulations) and a discussion on how to sustainably operationalize privacy compliance in light of all the laws taking effect over the next several years.

Speakers:

• Jon Lurie, Law Offices of Lurie and Ferri
• Chelsea Rissmiller, DLA Piper

1 Hour MCLE

Trademark licensing is more than just understanding trademark law and how to draft a contract. It can be an important part of your company’s overall business and brand strategy. We will discuss the upside opportunities of a well-structured license and pitfalls to avoid when creating one.

Speakers:

• Elizabeth J. Rest, Partner, Crown, LLP
• David Branfman, Counsel, Branfman Mayfield Bustarde Reichenthal LLP 

1 Hour MCLE

Nearly two years ago, the TMA went into force and created two new mechanisms to clean the slate of inactive trademarks: expungement and reexamination procedures.  During this panel, we will delve into the reasonable investigation requirement, and offer practical insights based on real-world examples of both successful and failed proceedings. The discussion will cover:

1. Best practices for gathering and presenting compelling evidence to support your reasonable investigation
2. Strategic utilization of expungement and reexamination proceedings
3. Experiences with expungement and reexamination proceedings before the USPTO

Speakers:

• Tamara Rabenold, Vaudra International 
• Ben Natter, Haug Partners LLP

1 Hour MCLE

This session is sponsored by Kilburn & Strode

U.S. and European IP law differ widely, including in the areas of data & patent term extensions which presents challenges in devising a cohesive IP strategy to optimize protection in both key markets. Moreover, over the last 12 months, significant legal developments have occurred in both territories and updated thinking is needed. In the panel, Patrick Reily (US Patent Attorney, IP Society) gathers insights from James Snaith (European Patent Attorney, Kilburn & Strode LLP) and Marc Peters (US IP Litigator, Turner Boyd LLP) on the latest updates in this area.

Speakers:

• James Snaith, European Patent Attorney, Kilburn & Strode LLP
• Marc Peters, US IP Litigator, Turner Boyd LLP
• Patrick Reilly, US Patent Attorney, IP Society

1 Hour MCLE

Section 230 is the legal foundation of the modern Internet, but it’s poorly understood by many lawyers.  In particular, IP lawyers may be surprised by how much Section 230 has to say about IP law.  This keynote will demystify the law and explain why IP lawyers should care.

Eric Goldman is Associate Dean for Research, Professor of Law, Co-Director of the High Tech Law Institute, and Supervisor of the Privacy Law Certificate, at Santa Clara University School of Law. His research and teaching focuses on Internet law, and he blogs on that topic at the Technology & Marketing Law Blog.

1 Hour MCLE

2023 has been an eventful year for trademark and copyright decisions by the U.S. Supreme Court.  And 2024 is shaping up to be another robust docket of trademark and copyright cases the Supreme Court will consider.  Back by popular demand, our distinguished panelists will provide in-depth, practical insights about this year’s blockbuster Supreme Court trademark and copyright decisions, including a look at the ramifications of Jack Daniel’s v. VIP Products, Warhol Foundation v. Goldsmith, and Abitron v. Hetronic.  They will also examine those cases currently pending – or likely will be pending in the near future – before the Court, such as:

• “Trump Too Small” trademark / free speech case (Vidal v. Elster)
• Recovering damages beyond the Copyright Act’s statute of limitations (Warner Chappell Music, Inc. v. Nealy)
• Scope of direct liability for copyright infringement (ABKCO Music, Inc. v. Sagan)
• Viability of the Ninth Circuit’s “server test” (Hunley v. Instagram)

And don’t miss out on the panel’s prognostications for 2024!

Moderator: Angus MacDonald, University of California

Speakers:

• Tyler Ochoa, Professor, Santa Clara University, School of Law
• Jacqueline Charlesworth
• Vijay Toke, Partner, RIMON

1 Hour MCLE

In this enlightening session, join our panelists as they delve into the intricate world of protecting AI innovations with an emphasis on patents.  Explore the challenges, opportunities, and potential impacts of AI on business and technology in the realm of intellectual property.

Speakers:

• Sikander Khan, Founder, Flagship Patents 
• Soody Tronson, Founding Managing Counsel, STLG Law Firm
• Samir Raiyani

1 Hour MCLE; 1 Legal Ethics

Please join for a discussion of Rule of Professional Conduct 8.3, AI, and other important ethics topics in 2023.  Plus, we will look ahead to 2024 and the associated challenges and opportunities. 

Speaker:

• Robert Sall, Sall Spencer Callas & Krueger