Why you should attend
This program is designed to bring you up to date on both civil and criminal enforcement efforts of intellectual property. From the physical world to the internet, brands are not only building their intellectual property, but are heavily protecting it. In today’s billion dollar industry of infringement and piracy, it is critical to protect IP rights. This program will place you in a better position to think outside of the box when it comes to enforcement. The panels, comprising of in-house counsel, private firm practitioners and government agents, will guide you through the latest updates in each of their areas of expertise as well as lay out creative and strategic methods of enforcement. From the private sector to government, these groups work together to protect valuable property and provide each other with invaluable assistance in the fight against infringers.
What you will learn
- Current government IP programs, initiatives and legislation
- Coordinating enforcement matters with various government officials
- Recent case law and legislative updates covering counterfeiting in the physical and online worlds
- ICANN and gTLDs: updates on the registration process, new guidelines and potential enforcement issues
- Updates surrounding the interpretation and analysis of a trademark dilution claim: what one needs to know in order to have a successful claim
- Tips on when, and how, to use ITC proceedings for patent or other IP enforcement: recent decisions and a Federal Circuit update
- Fair Use Doctrine: When is it fair to use someone else’s work?
- Grey market goods and the first sale doctrine: recent copyright updates surrounding these issues
- When, how and if computer software code is copyrightable
- How in-house counsel build their brands and enforce against blatant infringements
- The importance of creating an enforcement program which works with your budget: can you enforce every online marketplace and social network or just some?
- Earn one full hour of ethics credit: avoiding common ethics problems related to enforcement, i.e. undertaking investigations, use of social media sites for research, pro se defendants
Who should attend
IP attorneys, general practitioners, in-house counsel and others charged with either protecting IP against infringement and counterfeiting, or advising on enforcement strategies and best practices. Don't miss this opportunity to get tips from government agency personnel and experienced IP counsel, both in-house and in private practice, on the latest protection and enforcement programs.
Morning Session: 9:00 a.m. - 12:45 p.m.
9:00 Opening Remarks and Introduction
Speakers: Brian W. Brokate, Kathleen E. McCarthy
9:15 Current Government IP Enforcement Programs and Coordinating Enforcement Matters with Government Officials
- U.S. Government IP enforcement successes and new initiatives
- Best practices for coordinating enforcement efforts with the Department of Justice, Homeland Security Investigations and Customs
- Enlisting the aid of the FTC in battling infringements and misrepresentations
Speakers: Angelo E.P. Mazza (moderator), Dax Terrill, Andrea Sharrin, Mark A. Witzal
10:30 Trademark Enforcement Update
- Counterfeiting case law updates: Where are we in the battle against direct and contributory infringers?
- The new gTLD system: Strategizing on both the application and brand protection level
- Dilution: When can the claim be used and when will a right’s holder win?
Speakers: Andy Abrams, Brian W. Brokate, Siegrun D. Kane
11:45 Patent Enforcement Update
- The impact of new patent legislation on patent litigation
- Patent case law trends
- When and how to use ITC proceedings for patent or other IP enforcement
- Update on Proposed Amendments to ITC Rules of Practice and Procedure
Speakers: Juliana M. Cofrancesco, Andrea L. Colby
Afternoon Session: 1:45 p.m. - 5:00 p.m.
1:45 Copyright Enforcement Update
- Fair use: What is fair use and when is it a proper defense? Latest case law updates
- Grey market goods: Can brand owners control such imports or will the First Sale Doctrine rule? Review of the Kirtsaeng Case
- Process of protecting computer software. When can it be copyrighted and an overview of Google v. Oracle
Speakers: Bruce W. Baber, Dale Cendali
2:45 Practical Advice on Stopping Blatant Infringements
- Trademark take-down do's and don'ts, including idiosyncrasies of various social media sites like Twitter, Facebook, YouTube, Amazon stores, Pinterest, etc.
- How best to attack Internet scams, phishing and fraudulent websites
- Managing time, budget and expectations when faced with different types of infringement
- Separating what's actionable from what can be ignored
Speakers: Kathleen E. McCarthy (moderator), Ewa M. Abrams, Merillat Frost, Peter C. Welch
4:00 Selected Ethics Issues in IP Rights Enforcement and Defense
- Investigating suspected infringement, including the risks of using social media and/or deception
- Communicating with unrepresented parties
- Lurking conflicts of interest
- Pitfalls in negotiating settlement agreements
- Keeping your confidential information confidential - common risks and mistakes
Speakers: Jeremy R. Feinberg, Nicole Hyland
Jeremy R. Feinberg
~ Statewide Special Counsel for Ethics, NYS Office of Court Administration
~ Trademark Counsel, Global Trademark Team, The Coca-Cola Company
~ Deputy Chief, Computer Crime & Intellectual Property Section, Criminal Division, U.S. Department of Justice
~ Attorney-Advisor, Intellectual Property Rights Branch, Regulations and Rulings, Office of International Trade, U.S. Customs and Border Protection
Peter C. Welch
~ Vice President & Associate General Counsel, Take-Two Interactive Software, Inc.
Mark A. Witzal
~ Deputy Director, National IPR Coordination Center, ICE / Homeland Security Investigations
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 0495741. You can also make reservations
online 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
Sheraton New York Hotel & Towers
, 811 7th Avenue, New York, NY 10019, 1-800-325-3535 or (212) 581-1000. When calling, please mention Practising Law Institute and mention SET#311155. You may also book online
PLI's live programs are approved in all states that require mandatory continuing legal education for attorneys, except Arizona. Please be sure to check with your state for details.
Please check the CLE Calculator above each product description for CLE information specific to your state.
Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys. All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.
Please note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.
Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.