43rd Annual IP Institute
State of the Art – Creativity and Innovation in the Arts and Sciences
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Several of our Interest Groups have regular monthly or quarterly calls to discuss current cases and developments, practical hypotheticals, as well as opportunities to write articles, coordinate webinars, speak on webinars, and participate in the IP section in other ways. To participate in the meeting, the dial-in number is (855) 520-7605, passcode 1211276419#, or click here if your mobile device permits one-click calling: (855) 520-7605,,1211276419#.
Note: This month, all of our Interest Groups will be meeting in person at the IP Institute in San Jose on November 9, 2018. For more information, see the notice in this issue of ID or visit our website here.
Wednesday, November 14, 2018, 5 p.m. - 6 p.m.
Presented by the International Interest Group
This program offers 1 MCLE credit. You must register in advance to participate.
The webinar will focus on intellectual property issues in the most popular social media platforms in China. Over the past few years, online advertisement and sales have moved from e-commerce platforms to social media platforms. In this webinar, we will provide an overview on intellectual property protection strategies and mechanisms available in the most popular social media platform WeChat, including complaint procedures and brand protection platform, and highlight noteworthy compliance issues under the Advertising Law.
Topics to be covered:
Anna Mae Koo is a Partner of Vivien Chan & Co. where she practices non-contentious, contentious and transactional intellectual property law. Ms Koo regularly advises on all areas of intellectual property including licensing, franchising, IP due diligence, prosecution and unfair competition law in China and Hong Kong.
Vivien Chan & Co. is a Greater China full-service law practice with established offices in Hong Kong and Beijing. With over 30 years’ experience of doing business in China, the team have an in-depth understanding and knowledge of China’s legal culture and marketing dynamics.
As one of the leading full-service law firms in Hong Kong and China, the firm has developed a wide range of clients and scope of services since its establishment. The firm has represented numerous Fortune 500 companies and Chinese clients engaged in a broad range of commercial transactions and regulatory issues since the 1980s.
This is particularly evident from its leading position in areas such as intellectual property, tax, employment, mergers and acquisitions and dispute resolution. The firm’s ability to collaborate across practices and borders with ease allows it to bring the right team to every transaction, regardless of location.
Moderator: David Tseng
Tuesday, December 4, 2018, 12 noon - 1 p.m.
Presented by the Technology, Internet, & Privacy Interest Group.
Throughout the history of the online commerce, states have been prohibited from collecting taxes from out-of-state merchants under Quill Corp. v North Dakota. That was until South Dakota v Wayfair decided in June in a 5-4 decision which reversed Quill’s physical nexus requirement since it had created “artificial competitive advantages.”
Matthew Schaefer, co-counsel in Wayfair, will explain what this ruling means, the parameters for states seeking to collect sales taxes under this ruling and Congressional legislation to clarify how the process should work.
Matthew Schaefer, a partner at the law firm Brann & Isaacson, has focused for nearly 20 years on state tax matters and contested proceedings before courts and administrative tribunals. He was co-counsel before the U.S. Supreme Court for the respondents in South Dakota v. Wayfair Inc., 135 S.Ct. 2080 (2018) and for the petitioner in Direct Marketing Association v. Brohl, 135 S.Ct. 1124 (2015). Matthew advises numerous e-commerce vendors, multi-channel merchants, and trade associations, and has represented the challengers in nearly every leading court case testing the constitutionality of state “economic presence” laws that impose burdensome tax and regulatory obligations on remote sellers.
Matt is a co-author of ‘Eyes on eCom Law,’ a blog that reports on legal developments of interest to direct marketers and online sellers.
Join us at the 43rd Annual IP Institute!
November 7-9, 2018
Fairmont San Jose
170 S Market Street
San Jose, CA 95113
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The IP Section of the California Lawyers Association presents State of the Art – Creativity and Innovation in the Arts and Sciences, and celebrates the diversity of IP in our lives and culture by offering outstanding educational programming as well as multiple fun networking events. Panels will cover patent, copyright, trademark, trade secret, internet and privacy, cybercrime, technology transfer, licensing, music and entertainment, IP specific ethics, and more. Honored speakers include Andrei Iancu (USPTO), Karyn Temple (US Copyright Office), Courtney Bailey (NASA), Brian Levine (DOJ), and Judge Richard Taranto (CAFC). Come and experience the State of the Art, Nov. 8-9 at the Fairmont Hotel in San José.
The conference will feature speakers who are experienced practitioners and thought leaders from leading law firms, law schools, and corporations who will share their insights and practical guidance that will help you in your own practice. Of note, we are once again offering CLE credit in the two difficult to obtain categories of Competence Issues and Recognition and Elimination of Bias. The day will also include several networking opportunities, including a Casino Night and this year’s 10th Annual Vanguard Awards lunch honoring the accomplishments of our four honorees in the categories of academic, in-house counsel, judicial, and private practice. We look forward to seeing you there. More information and Registration here.
The IP Section completed its first annual mock trial with Thurgood Marshall Academic High School on October 23 at the Golden Gate University School of Law. What a great event! Participants included students from the high school and two faculty members, Hon. Maria-Elena James (Ret.), and two law professors from Golden Gate.
Students were given a hypothetical trademark infringement action ("Fortnite" and "Fort Day" trademarks) between two software gaming companies. They were divided into plaintiff and defendant teams, and argued the law using a shortened list of the Du Pont factors for "likelihood of confusion." The students created opening and closing statements, prepared their clients and witnesses for trial, and developed questions for each party, a consumer witness and an expert witness for direct, cross and redirect examination. The Honorable Maria-Elena James (Ret.) presided over the trial. We had a fantastic day, and the students really rose to the challenge.
The Music Modernization Act (MMA) was signed into law on October 11th. Its official cite is now Public Law 115-264. As no conference committee was held to work out the differences between the House and Senate versions of the MMA, there is no traditional conference report. However, given the importance of the bill, the Chair and Ranking Members of both Judiciary Committees agreed on an updated section by section and bill explainer that would have been used in a traditional conference report. That report is now linked in the Congressional Record of October 19th and is now posted on the House Judiciary Committee website here. The Copyright Office website related to the MMA is here.
On October 16, 2018 the Copyright Office issued an Interim Rule and Notice of Inquiry Regarding Pre-1972 Sound Recordings Pursuant to the Music Modernization Act (“MMA”).
The interim rule establishes a mechanism for rights owners to file schedules listing their pre-1972 sound recordings with the Office, for individuals to request timely notification of when such filings are indexed into the Office’s public records, and for the submission of contact information by entities publicly performing pre-1972 sound recordings by means of digital audio transmission as of October 11, 2018.
In the notice of inquiry, the Office seeks public comment regarding the MMA’s noncommercial use exception. The Office is soliciting comments regarding the specific steps that a user should take to demonstrate she has made a good faith, reasonable search to determine if a pre-1972 sound recording is being commercially exploited. The Office also solicits comments regarding the filing requirements for the user to submit a notice of noncommercial use, and for a rights owner to submit a notice objecting to such use.
The instructions on how to submit a comment are available here for the interim rule and here for the notice of inquiry. Written comments must be received no later than November 15, 2018, at 11:59 p.m. Eastern time.
In October, EFS-Web and Private PAIR users will need to use a new, safer, and simpler log-in. Learn about the changes at one of a series of virtual informational sessions hosted by the USPTO’s eCommerce Modernization team.
Experts will share information about the new USPTO.gov account for authenticating into EFS-Web and Private PAIR. Information presented at the sessions will be updated to include Migration and Sponsorship details as they become available. The team will also give a brief overview of structured text features and updates to the new Patent Center. Each virtual session will last approximately one hour. Register for one of the sessions listed below, and visit the authentication change page for step-by-step instructions.
The Defend Trade Secrets Act Supplement to TRADE SECRET LITIGATION AND PROTECTION IN CALIFORNIA is now available for purchase in the Section’s bookstore. This Supplement includes additional practical tips and strategies related to the DTSA, and addresses:
The price is $25 for members and $30 for non-members.
Please provide a short bio (250 words max) that includes the member’s professional information and something personal (hobbies, interests, something unique about the member, a “fun fact,” etc.), a picture, and the member’s contact information. Please also have the member answer the following question: What is the most important skill you believe an IP attorney should have? Please send all submissions to Erica Bristol, at email@example.com.
Member Spotlight materials may also be posted in IP Section social media. If submitting on behalf of a member, you must obtain that member’s permission. Selection of member for Section Member Spotlight, posting dates, selected publications/social media, and editing are at the IP Section’s sole discretion.
IP Section CLE Webinars and Conferences Available On Demand or as Downloadable Podcasts*
Did you miss a live IP Section webinar or conference? Listen to recordings of past programs as streaming webinars or downloaded podcasts, and receive the materials and your CLE certificate of attendance. To see what's available, click here and select Intellectual Property Law Section.
Original Program Date: April 26, 2018
Presented by the Technology, Internet & Privacy Interest Group
The Federal Trade Commission is paying increased attention to social media influencer marketing. After a series of warnings, the FTC has begun enforcement actions against influencers and their advertisers. What do influencers need to do to avoid falling into the FTC’s crosshairs?
Click here to buy a license now.
Original Program Date: April 10, 2018
Presented by the Litigation Interest Group
Social media and digital marketing has changed the playbook for consumer packaged goods (CPG) companies to become successful and thrive. As counsel for these clients, you need to be dynamic and develop trademark strategies that not only addresses current, but also future, needs. This webinar will discuss various strategies to manage the obligations of this role, including: discussions to have with your client when creating their brand; developing a comprehensive trademark strategy; and effective use and monitoring of trademark and social media platforms.
Speakers: Allison Roseman Hagey, Rebecca Horton
Original Program Date: March 27, 2018
Presented by the In-House Counsel Interest Group
The recent wave of high-profile allegations stemming from the #metoo movement shows no sign of relenting, requiring employers to address their own internal policies related to workplace complaints. Just as important as developing anti-harassment and discrimination policies is establishing company procedures for investigating employee complaints. Promptly and effectively investigating and remediating employment claims is required of California employers and should mitigate potential damages. Join employment attorney and seasoned investigator Lisa Ryan in this one-hour webinar that will address best practices for workplace investigations, including WHEN to investigate, WHO should investigate and HOW to conduct and conclude an investigation.
Speaker: Lisa Ryan
*Many recordings of webinars and conferences are available within a few weeks of when they were presented live. Not every program is available as a downloadable podcast. Some in-person programs are audio-video. Account registration and device with internet connection required. IP Section CLE Webinars and Conferences Available On Demand or as Downloadable Podcasts*
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 Matt Neco. Note our new email address. Please add us to your trusted email addresses to ensure you keep receiving communications from the California Lawyers Association, the new home of the IP Section.