Why you should attend
PLI’s Intellectual Property Law Institute
is a “must-attend” program for IP lawyers. This program provides a complete analysis of key events in all areas of IP, including updates on cases, legislation and government agency developments that IP lawyers need to know.
A highlight of the program will be a panel of in-house IP counsel from prominent companies discussing the many facets of dealing with IP and related issues in a global context and suggesting some best practices and strategies. Plenary sessions will treat the issues in cloud computing; the problems associated with the large-scale acquisition of patents; the interface between copyright law and contract law; the growing conceptual tension between providers of information technology and the providers of media content; developments in trademark law; trade secret law update; and ethics for the IP lawyer (one full hour credit).
This year’s program will feature four breakout sessions, each with three current topics, that will focus respectively on copyrights, licensing, patents, and trademarks. Among the breakout topics will be a comparative discussion of IP licensing in the U.S., Asia and Europe; a discussion of revisions to the Patent Statute (the America Invents Act) after one year; recent developments in divided infringement and secondary liability for infringement; the implications of license terminations under Section 203 of the Copyright Act and the closely watched Rosetta Stone v. Google
keyword case. (Webcast viewers will view the 1:30 p.m. Copyright breakout session and the 3:30 p.m. Patent breakout session.)
What you will learn
- The latest updates in the law of patents, copyrights, trademarks, and trade secrets
- Pending legislation regarding online piracy
- How to purchase and manage the acquisition of patents or other IP
- The proof problems in divided infringement and induced infringement
- Which IP issues you can, and which you cannot, expect to control with a contract
- Effective techniques for combating counterfeiting
- Problems in cloud computing and how to ameliorate some of them
- The latest developments in trademark law
- In-house panel providing guidance on managing IP and related issues internationally
- Four separate breakout sessions
- Complete overview of IP law
- Earn one full hour of Ethics credit
Who should attend
General practitioners, intellectual property attorneys, in-house counsel and others who need a comprehensive update on the major areas of intellectual property law. Join Institute Co-Chairs David Bender and Robert P. Taylor as well as a faculty of distinguished intellectual property practitioners from major corporations and law firms in the United States and Europe at this year’s Institute. Don’t miss this once-a-year opportunity to learn from the best and to network with in-house and outside intellectual property lawyers from around the world. In just two days, you will become up-to-date on many of the important intellectual property developments, learn best practices in a variety of practice settings, hear best practices to maximize the value of intellectual property assets, and earn ethics credit, too!
Day One: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:30 p.m.
9:00 Program Overview
9:15 The Intersection of Contract Law and IP Law in Software Licensing
- Are reverse engineering prohibitions enforceable?
- What limits does the misuse doctrine place on license terms?
- What is the interaction between license scope and enforcing DMCA anti-circumvention rules?
- What contract terms prevent first sale or exhaustion?
- When does copyright preempt contract?
10:15 Legal Issues in Cloud Computing
- The economics
- The technology
- IP issues arising in cloud computing
- Privacy issues inherent in cloud computing
- Desirable contractual provisions
- Practical problems
11:15 Networking Break
11:30 Trade Secret Update
- What do recent convictions, new legislative proposals, and the Second Circuit’s decision in United States v. Aleynikov mean for the Economic Espionage Act?
- What are best practices for protecting trade secrets in a digital age?
- How do laws protecting computer systems relate to laws protecting trade secrets?
- How can organizations protect their trade secrets when dealing with other businesses?
- How can you prove and defend against trade secret claims?
- Remedies available for trade secret misappropriation: A close look at designing equitable orders and calculating monetary awards
- What is the extraterritorial reach of U.S. trade secret laws and orders?
- How can alternative dispute resolution techniques help resolve trade secret disputes?
Afternoon Session: 1:45 p.m. - 5:00 p.m.
[Concurrent Breakout Sessions]
1:45 Breakout Session No. 1a - LICENSING (WILL NOT BE WEBCAST)
Licensing in the EU
- Key differences between U.S. and EU protection for intellectual property
- Standards and licensing issues associated with standardized technologies
- Antitrust considerations: Territorial restrictions and exclusivity, customer and end-user restrictions, etc.
- Other issues affecting licensing within the EU
Licensing in China
- Comparative review of (and recent developments in) IP laws of China and how differences affect specific license provisions
- Common “gotchas” in cross-border licensing arrangements
- Review of governing law, arbitration and other similar enforcement issues in the context of cross-border licensing arrangements
- Specific issues that arise in licensing to joint ventures in China
- Practical measures to protect your IP
Charan J. Sandhu
Licensing in the U.S.
- Assignability of licenses
- License conditions versus contractual commitments
- Rights of exclusive licensees
- Collaborative developments and joint IP ownership and licensing
- Licensing new technologies (e.g., “Big Data” and “CleanTech”)
William A. Tanenbaum
1:45 Breakout Session No. 1b - COPYRIGHT (WILL BE WEBCAST FROM SAN FRANCISCO ON 10/15)
DMCA Section 512 “Safe Harbor” Requirements, Risks and Strategies
- Understanding Section 512
- “Safe Harbor” requirements and red flags
- Repeat infringer policy and agent designation
- Takedown notices, procedures and expeditious action
- Veoh Networks, YouTube and other lessons learned
J. (Jay) T. Westermeier
- Work for hire pre-1978 (Fifty-Six Hope Road Music v. UMG)
- Loan-out corps
- Statutory gap
- Joint works (Scorpio Music v. Victor Willis, S.D.C.A. 3:11-cv-01557)
- Spec scripts - remakes and sequels
Kenneth N. Swezey
Golan v. Holder: Return from the Dead
- The meaning of “Limited Times”
- Promoting “Progress of Science and the Useful Arts”
- First Amendment considerations
- Practical considerations - orphan works and new costs
Jonathan E. Moskin
3:15 Networking Break
3:30 Breakout Session No. 2a - PATENT (WILL BE WEBCAST FROM SAN FRANCISCO ON 10/15)
America Invents Act - One Year Later
- Implementation of the first-to-file rule
- Procedural changes such as:
- post-grant proceedings for third parties
- post-grant proceedings for patent owners
- pre-issuance submission by third parties
- pre-grant derivation proceedings
- Status of PTO rulemaking
- Real-world effects of the legislation
Compulsory Licensing in Lieu of an Injunction: Developments in Post-Judgment Relief in Patent Cases
- The availability of court-awarded compulsory license in cases where no injunction is appropriate to remedy an adjudicated infringement
- Factors that courts have considered in fashioning post-judgment royalty awards
- The role that willfulness plays in such awards
- Important CAFC and district court decisions
- The “lump-sum” reasonable royalty award as an alternative to post-judgment running royalties
- Compulsory licensing relating to standards and antitrust enforcement
Joseph P. Lavelle
Indirect Infringement: Navigating the Troubled Waters of Intent and Divided Infringement
- Impact of the much anticipated LimeLight v. Akamai case
- Current state of the law on divided infringement
- Relationship between foreign patent exhaustion and indirect infringement allegations
- Going forward: Strategies for handling the issue of divided infringement
Paul R. Gupta
3:30 Breakout Session No. 2b - TRADEMARK (WILL NOT BE WEBCAST)
Update on Keyword Advertising and Rosetta Stone v. Google
- Why we care about Rosetta Stone - awaiting a decision from the 4th Circuit
- Search engine liability: Are the search engines stoppable in selling keywords? Notice and takedown: Does the search engine have any duty to act as an Internet police force?
- Use of keywords by counterfeiters vs. use of keywords by competitors: Does it make a difference? Should it make a difference?
- Advertiser liability: Recent wins and losses help identify factors that make a difference
- Europe vs. U.S.: Do the results differ for either search engines or advertisers?
Kathleen E. McCarthy
Recent Developments in TTAB Practice and Procedure
- New procedural developments
- Noteworthy substantive decisions
- New precedents
- Motions and evidentiary decisions of interest
- The Board’s treatment of dilution
Developments in Anti-Counterfeiting Enforcement and Remedies - What’s Working and What’s Not?
- Can they get away with that? The dust has settled on Tiffany v. eBay and now third parties are targets - case law updates regarding third party liability in the U.S. and Europe
- What else is happening? Case law updates regarding direct infringers, damages, and relief obtained in the U.S. and Europe
- Will there ever be satisfactory legislation? The nightmare continues - ACTA, PIPA, SOPA and others legislative updates
- What’s Uncle Sam up to? Government programs and initiatives, including new developments from the Departments of Justice and Homeland Security
- Time is money, so let’s get busy: The best enforcement strategies and programs regarding online and physical world enforcement
Brian W. Brokate
Day Two: 9:00 a.m. - 4:15 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 The Battle Between the Entertainment/Information and Technology/Online Service Industries: An Overview and Debate
- Hot copyright and Internet law topics in the trial courts
- Appellate decisions regarding the DMCA safe harbors: The effect of UMG v. Veoh Networks and Viacom v. YouTube
- Government enforcement: What does the Megaupload indictment mean for mainstream companies?
- Alphabet soup legislation and treaties: SOPA, PIPA, ACTA, and TPP - and the public’s reaction
- Deal-making: Why can’t we all just get along?
Andrew P. Bridges, Kelly M. Klaus
10:00 The Sudden Wave of Patent Acquisitions and What It Portends
- The startling number and size of transactions since 2010
- The views of the antitrust enforcement agencies and the conditions they have imposed
- Conducting due diligence as to validity, scope, prior licenses and enforceability
- Managing enforcement and other details when the buyer is a consortium
- Do commitments to standard-setting entities survive the sale?
- The Buyer’s decision on what to pay
- The Seller’s decision on how to maximize returns
Robert P. Taylor
11:00 Networking Break
11:15 Trademark Update
- Aesthetic functionality: What do female cartoon characters, red soles, and wax seals tell us about the state of the aesthetic functionality doctrine? An update on Betty Boop, Christian Louboutin and Maker’s Mark
- Dilution: Walking the line between parody and dilution: A look at Crackberry and Charbucks and the degree of similarity standard
- The new Federal Rules extending work-product protection to communications between counsel and experts: Is it really a game changer?
- eDiscovery: Is relief in sight for trademark litigants? The Federal Circuit’s Model Order limiting e-Discovery in the patent field; Frito-Lay North America, Inc. v. Princeton Vanguard LLC
- What is “exceptional” and “unreasonable” for purposes of an attorney’s fees award under the Lanham Act? A look at 1-800 Contacts v. Lens.com (D. Utah), Nightingale Home Health Care, Inc. v. Anodyne Therapy LLC (7th Cir.), and Secalt v. Wuxi (9th Cir.)
Siegrun D. Kane
Afternoon Session: 1:30 p.m. - 4:15 p.m.
1:30 Corporate Counsel Panel: International Issues for Corporate IP and Ancillary Counsel
- Comity not comedy: Bankrupt patent holders looking to terminate existing IP licenses and license commitments - Lubrizol déjá vu?
- Complying with “working” requirements for patents in an emerging market in view of the potential for compulsory licensing and sanctions
- How the proposed new EU data protection regulation will impact your EU operations
- Potential ways to manage the cross-border data flows in a global environment
- The legal and cultural challenges in creating a global services or licensing agreement, particularly in a highly regulated industry
Marc Sandy Block, Andrea L. Colby, Orrie Dinstein, Joel Wolfson
3:00 Networking Break
3:15 IP Lawyer Ethical Issues
- Latest trends in IP malpractice suits
- Emerging issues in confidentiality and privilege
- Conflicts of interest and disqualification
- Docketing/calendaring practices (use of technology)
Katie M. Lachter
~ Adjunct Professor, University of Houston Law Center, The Law Office of David Bender
Marc Sandy Block
~ Counsel, Intellectual Property Law, International Business Machines Corporation - IBM Corporation Intellectual Property Law
~ Chief Privacy Leader and Senior IT & IP Counsel, GE Capital Corporation
~ Professor of Law and Director, Institute for Intellectual Property and Social Justice, Howard University School of Law
~ Director and Assistant General Counsel, Bank of America Merrill Lynch
New York City Seminar Location
PLI New York Center, 810 Seventh Avenue at 53rd Street (21st floor), New York, New York 10019. Message Center, program days only: (212) 824-5733.
New York City Hotel Accommodations
The New York Hilton & Towers, 1335 Avenue of the Americas, New York, NY 10019. 1 block from PLI Center. Reservations 1-800-HILTONS or, 1-877-NYC-HILT. Please mention that you are booking a room under the Practising Law Institute Corporate rate and the Client File # is N495741. Reservations on line at www.hilton.com and enter the same Client File # in the Corporate ID # field to access Practising Law Institute rates.
The Warwick New York Hotel, 65 West 54th Street New York, NY 10019. 1 block from PLI Center. Reservations 800-223-4099 or, hotel direct 212-247-2700. Please mention that you are booking a room under the Practising Law Institute Corporate rate. Reservations on line at www.warwickhotelny.com Click reservations in menu bar on left. Select desired dates. In 'Special Rates' drop down window select Corporate Rate. In 'Rate Code' enter PLIN. Click search and select desired room type and rate plan. Or, you may email reservation requests to: email@example.com.
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