Intellectual Property Law

Recap of the 44th Annual IP Institute

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The IP Institute, flagship program of the CLA Intellectual Property Section, celebrated its 44th year in November with a stimulating two-and-a-half-day conference in Las Vegas. This year’s program, “IP Beyond Borders,” marked the first time the conference has been held outside California.

Four law student reporters – Connie Van, Stacey Zumo, Maryam Emadi, and Nicholas Terwilliger – were invited to the Institute to summarize events and share highlights of the program on social media outlets. 

Review of 44th Annual IP Institute
By Connie Van

The IP Section of the California Lawyers Association hosted the 44th IP Institute: IP without Borders conference on November 14-16, 2019, in Las Vegas, Nevada. As the title implies, the conference included global IP topics. Each panel included some of the most distinguished IP professionals and each shared valuable information from his or her  area of expertise.

One session included the topic “How to Best Utilize Tess for Trademark Clearance and Prosecution.” Pete Bromaghim, partner at Womble Bond Dickinson, LLP and former USPTO trademark examining attorney, shared how to better utilize TESS. Despite various alternative services available, Pete explained how to better narrow down a trademark search (i.e. classes, disclaimers, field codes) in order to thoroughly assess clearance, navigate prosecution, and better prepare for enforcement and disputes of trademarks.

Another very interesting session was “Litigating Pharmaceutical Trade Secrets Cases.” There, Dr. Jayashree Mitra, partner at Zubler Lawler and Thomas Wallerstein, partner at Venable LLP covered developing topics of trade secret law. Thomas started the session by stressing a very important aspect of trade secret law – it must be a secret! He then shared the draws and excitement of trade secret litigation because it usually involves a close relationship, later ruined by the drama of a betrayal. Dr. Mitra also shared how a pharmaceutical trade secret is distinguished from the ordinary type because it could sometimes involve living things. As such, a large focus of the session explored how the Defend Trade Secret Act could be used to protect this type of intellectual property. The speakers brought to the forefront areas in which a pharmaceutical trade secret is likely to be an issue: (1) research and co-development agreements; (2) misappropriation by employees; and (3) regulatory filings.

“Understanding the Legalities of Loot Boxes and Microtransactions” was a session on the unsettled area of law involving video game monetization and the interplay of international and domestic law. Speakers Sean C. Kane, co-chair of the Interactive Entertainment Group at Frankfurt Kurnit Klein + Selz PC and Chrissie Scelsi, U.S. General Counsel for Wargaming, Inc. provided valuable best practices for this complicated area. To start, they explained that video game monetization is necessary because the cost of games in general have actually decreased over time. As such, video game companies have monetized video games by way of loot boxes which are “consumable virtual goods available in games, usually for purchase, which contain in-game items that may be randomized or non-randomized in value. The large issue is whether or not loot boxes are considered gambling; and if so, how is that game going to be treated in a particular state? A few best practices included disclosure of microtransactions, age restrictions, and disclosure of odds. But most importantly, one must consider how each jurisdiction defines the term gambling.

Another fascinating session was “Food and Intellectual Property.” Speakers Beatrice Martinet, partner at Sideman Bancroft LLP and Mark Leonard, General Counsel for Jelly Belly Candy Company explained the various types of IP protection applicable to foods, an item that is consumed and is perishable. One way to protect food IP is to seek trademark protection. This type of protection includes the brand name of the product and the trade dress of its packaging or shape. I asked Mark for a strategy on protecting a food’s scent. He explained, for food companies that work with specific suppliers or packers, one way would be to contract that supplier from selling that exact ingredient/recipe/flavor/scent to any other company.

Another way to protect food IP is through design patent protection. Here, Beatrice explained the difference between US and EU protection. For instance, the duration under US protection is 20 years while EU protection for a registered community design is five years, renewable up to 25. Since design patents are all about how the product looks, US protection is a viable option for the product or packaging shape when trademark or utility patent protection is unavailable, and EU protection is a viable option for original product shape.

A third possibility is to seek utility patent protection. Within the food business, Beatrice and Mark explained that this type of protection is well suited for food machines, packaging, and possibly very innovative food or food processes. But it seems like this type of protection requires a high threshold because, cooking food or creating recipes in the general sense, only involves a slight addition or elimination of ingredients. Thus, it wouldn’t ordinarily satisfy the requirements of new, useful, nor non-obvious.

Another consideration for protection is trade secret. The speakers explained this type of protection would be for formulas and recipes. As such, a strength of trade secret protection is that it could last infinitely, like trademark protection. On the other hand, protection here is vulnerable to disclosure and therefore, protection could easily be lost.

This was an incredible opportunity to connect with IP professionals and learn about how current IP issues are considered in practice. As a law student, it was very reassuring to witness each speaker’s passion for his or her topic. Moreover, the speakers were incredibly welcoming to questions I had after their sessions and did not hesitate to offer valuable advice to a wide-eyed law student.

Review of 44th Annual IP Institute
By Stacey Zumo

I have been to a lot of conferences and CLE events in my time both as a law student and a legal assistant, and I have to say that the IP Institute: IP Without Borders conference was one of the most impressive ones I have attended. The panelists were fantastic, everything was seamlessly organized, the staff was knowledgeable and helpful, the food was delicious, the people were amazing—what more could you ask for in a 3-day conference?

In addition to being well-organized, the Institute did a phenomenal job of covering all relevant areas of IP and privacy law for practitioners who practice IP in any way, including some sessions for those breaking into the industry.

The institute kicked off on Thursday, November 14th at the Wynn in Las Vegas and was divided into a patent track and an “other” track. I opted to attend the patent track sessions on the first day.

The first session I attended was Patent Prosecution for New Attorneys, led by TJ Singh. This session was an interesting start to the Institute, since everyone in the room had been practicing some form of patent law for at least a couple of years and the majority had been practicing much longer. In response to this poll, the TJ switched gears spontaneously and catered the presentation more to the seasoned professional. It was impressive to see him seamlessly change presentation to accommodate the audience.

The next session, Key Terms of a License Agreement, was a very interesting addition to the patent track. Although speaker Kevin DeBre did not speak directly about patents, he talked about a variety of patent-adjacent issues, including protecting data, university licensing, joint development, data and patent transfer in mergers and acquisitions, and other terms necessary when drafting a license agreement. I found the panel extremely informative and broken down in simple enough terms that a beginner could follow along easily but not too simple to bore a seasoned practitioner. This was one of my favorite panels.

The evening wrapped up with a networking and golf event at Top Golf. I had the first opportunity of the day to be able to meet people and I swung a golf club for the first time ever. It was a fun event with great food and a unique atmosphere to network.

Friday opened up with a full breakfast, followed by opening remarks and a general session with Hon. Andrew Gorden, Hon. Phillip Pro, and Andrew Stroud from Hanson Bridgett. They talked about strategies for IP litigation. Following this general session, I chose to attend the “other” track for the day.

The first session, What Happens in the EU Doesn’t Stay in the EU, was the most useful session for me. Christine Lyon of Morrison & Foerster, Zerina Curevac of Eaze, Catherine Gellis of CGA Counsel, and Lorrie Ma of Uber broke down the elements and problems (mostly problems) of the CCPA and compared it to the GDPR. It revealed all of the issues that companies are going to face when attempting to comply with the CCPA and the challenges that privacy lawyers will have to overcome once it goes into effect.

Next, I attended the session, So You Thought It Was a License Agreement…Craps! Avoiding the Franchise Surprise. This session, led by Dawn Newton of Donahue Fitzgerald and Tal Grinblatt of Lewitt Hackman, discussed the elements of a franchise and how to distinguish a license agreement from a franchise agreement. They also talked about best practices and how to avoid liability for inadvertently violating franchise laws.

Next was a table topic lunch, where attendees could choose from a plethora of tables to have casual conversation about their area of choice. I was surprised to see the broad array of interest groups, indicating how many substantive areas of law IP touches, from cannabis to technology to international to entertainment.

After lunch, I attended the Successful Enforcement Efforts in China panel, where Jason Yao of Wanhuida Peksung in China and Devon Beckwith of Stussy discussed trademark enforcement strategies in China. They also discussed the difference between administrative and judicial courts, criminal sanctions for counterfeits, the necessity of registering a trademark in China in order to enforce it, and trademark invalidity actions.

This session was followed by Entertainment Agreements in the Live Entertainment Industries. Local Las Vegas entertainment law superstars Mark Tratos of Greenberg Traurig and Jennifer Ko Craft of Dickinson Wright discussed the history and development of the entertainment industry in Vegas and types of contract structures in the world of live entertainment.

The evening closed with a professional responsibility session, which discussed ethical issues faced when practicing before the USPTO, the PTAB, and the TTAB and was led by Kimberly Weinreich from the USPTO. This was followed by the annual Vanguard Awards. The recipients of this year’s Vanguard Awards were Catherina Lacavera, VP of Google; Francoise Gilbert, CEO of Data Minding Legal; Hon. Michael Fitzgerald, judge at the US District Court, CDC; and Anthony Reese, Law Professor at UC Irvine. A nightcap followed, hosted by the Cannabis Interest Group.

Saturday started off with another delicious (and surprisingly healthy) breakfast, followed by a general session on implicit bias, led by the fabulous Dana Tippin Cutler of James W. Tippin & Associates. She taught us about implicit bias, micro-aggressions, and other issues affecting our daily lives and work environment. It was the most entertaining session on diversity and inclusion that I have ever attended.

I chose to hop back onto the patent track for the closing day. The first session, concerning the extraterritorial reach of patent damages, led by Alex Chan of Devlin Law Firm LLC and Andrew Michaels of the University of Houston Law Center, was about the practical implications of WesternGeco and how to navigate clients through global markets post-WesternGeco, where one can now recover damages from outside the US.

Next was Managing Patent Due Diligence and Licensing in M&A Transactions, led by Jill Hubbard Bowman of Intel and Carrie Le Roy of Gibson, Dunn & Crutcher. This panel focused on potential pitfalls during the IP due diligence process, risk mitigation techniques, integration, and other best practices when doing M&A transactions.

A speed networking lunch followed, which provided participants a chance to talk to people they had not yet met. A panel on food and intellectual property followed the lunch, appropriately. Beatrice Martinet of Sideman Bancroft and Mark Leonard, General Counsel of Jelly Belly, talked about how they are using IP to distinguish their products from their competitors. I found it most interesting that they talked about nontraditional ways to protect their products’ IP, such as protecting the recipe for Jelly Belly’s flavors. The Institute closed with a session on competence and mindful lawyering, led by Mark Fingerman of ADR Services.

As a law student, this Institute will have a lasting impact on my career development. I have learned a lot about different areas of IP, licensing, and privacy law and have made incredible connections that I would not have made without having attended the Institute. I not only met well-established attorneys from all over California but, also from all over the world. This year’s Institute was truly without borders.

Review of The Show Must Go On: Entertainment Agreements in the Live Entertainment Industries panel
By Nicholas Terwilliger

Agreements between artists and the venues that host their shows are more complicated than meets the eye. Often times it’s the terms in these agreements that are the deciding factor on if the show will go on. This panel was hosted by two of the biggest names in live entertainment law, Mark Tratos of Greenberg Traurig, LLP, and Jennifer Ko Craft of Dickinson Wright, PLLC. Collectively, the speakers represent some of the biggest names in live entertainment, which is why Las Vegas was the perfect venue for this panel.

Tratos and Craft began the panel with an overview of Personal Service Agreements. As they explained, these agreements can get complex rather quickly due to the nuances involved. The Right of Publicity is a standard, but key provision in entertainment agreements and include provisions that protect the performer’s name, likeness, and image. Nuance comes into play in the scope of the agreement. There is no federal statute for the Right of Publicity, therefore, the scope varies state by state, even when they are seemingly similar. For example, here are a few of the types of agreements discussed by Tratos and Kraft where one might see variations: influencer agreements, e.g., Kim Kardashian using a product on her show; promotional agreements, such as meet-and-greets where the talent appear publicly; endorsement agreements, which are ongoing engagements (i.e., print, and commercial, where the talent is more involved in the promotion of the product); and collaborations or joint ventures.

Moreover, matters can get confusing with post-mortem rights of celebrities. Again these laws vary state-by-state without a consensus on how they should be handled. In states that recognize post-mortem rights, there may be additional requirements that need to be met in order for those rights to be enforceable, e.g., the descendant’s or licensee’s registration of a claim of the deceased’s publicity rights with the appropriate Secretaries of State. The panelists, however, labeled the “Grant of Rights” clause to be the most critical provision. Exclusivity, post-term-rights, and persona rights should all be included in the “Grant of Rights.”

One of the more fascinating topics of this panel was how entertainment agreements have evolved in the 21st Century. Entertainment lawyers are now faced with modern challenges that create new issues that need to be addressed. One of these modern challenges discussed briefly is the emergence of the “influencer.” Influencers are, for all intents and purposes, people who are heavily engaged on social media, that have a certain influence over their many followers, which companies use for marketing their products. The emergence of the influencer has given companies a whole new avenue for advertising their product line, but it has also opened up a whole new set of provisions and liability that attorneys need to be aware of for their clients.

An especially interesting provision that has recently been amplified by the “#metoo movement” are morality clauses. Craft explained that she likes to put in “reverse” morality clauses that allow the artist/celebrity to disaffirm a contract if the company does something that violates the morals of her client. These provisions also protect the artist/celebrity from the company disaffirming contracts for things that the client has done in the past, which if anyone knows from social media, is a must-have provision!

There is obviously so much more that was covered and that needs to be included in these rich agreements like term, payments, and territory, to name a few. The bottom line is that as attorneys you need to do what is best for your client, which means protecting their image, and protecting them from liability. And as Jennifer Ko Craft so eloquently stressed, “don’t forget to include your audit rights!”         

Review of Patent Prosecutions for New Attorneys panel
By Maryam Emadi

As a new patent prosecution intern, I was inspired by many of the patent panels, but the first panel entitled “Patent Prosecutions for New Attorneys” was the most interesting panel. It was held by patent attorney, TJ Singh. He explained about the efficient means of translating the technology into words to make it convenient for people to comprehend the innovations. Patents are the way to translate technology into words, and he discussed the different ways of effectively writing patents so people can comprehend the changes in technology. Because the engineers who invented the technology are often reluctant to describe their innovations, writing the patents requires a complete understanding of the technology.

Mr. Singh further explained the best methods of drafting patent claims. He noted that the first claim is the most important. If the first claim is written effectively and clearly, the patent application is more likely to satisfy the requirement of novelty and help to avoid validity challenges. A patent lawyer must be very careful about every single word she or he writes while drafting the patent. It is interesting that even using different articles would change the meaning of the word. Therefore, using indefinite articles for introducing each new claim, consistency in describing the claims, and avoiding trivial claims are some of the important factors to consider when drafting a patent application.

Singh also described the importance of the relationship between patent prosecutors and patent examiners. He explained that patent attorneys often believe that patent examiners are working against them. If patent lawyers start to believe that patent examiners are on the same team with them working their best to review the claims, the patents will be written more clearly and concisely. When patent prosecutors try their best to meet the expectation of patent examiners, the process of prosecuting the patent application will be shorter and more efficient.

One of Singh’s concerns was the importance of the patent appeals process. Because patent prosecutors can only amend patent applications after they have been submitted to the USPTO (United States Patent and Trademark Office), sometimes (depending on the strength of the rejection) it is more efficient to appeal the patent instead of amending it. This panel certainly provided new prosecutors with efficient approaches to writing well-organized and competent patents.

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