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Understanding the Intellectual Property License 2008

Dec. 15 - 16, 2008
PLI California Center-San Francisco, CA


Overview

Recently admitted NY attorneys: This program is accredited for transitional CLE credit

Why You Should Attend

Licensing is one of the hottest areas in intellectual property today. The licensing of intellectual property has exploded into a multibillion-dollar industry. Many companies are analyzing and identifying their intellectual property assets to determine which they can license and how they can license them. Virtually every business today will confront licensing issues on an increasingly frequent basis. A solid base of knowledge about licensing of intellectual property has never been more important for companies and their counsel. This introductory course will give you an overview of how to negotiate and draft effective license agreements, whether you are the licensor or licensee. Experts in licensing will discuss different kinds of licensing agreements, and the business and legal issues related to them.

What You Will Learn

  • Drafting techniques and suggestions for specific clauses
  • Key provisions and practical considerations in trademark and copyright licenses
  • Open source licenses and the impact of GPLv3
  • Special issues for User-Generated content and the Internet
  • Strategies for exploiting technological property rights
  • Coordinating patent licenses with software and database licenses
  • Enforcement and protection of rights in the international arena
  • Avoiding antitrust problems 
  • Rights and remedies in the event of bankruptcy
  • What happens when the agreement has to be enforced
  • The “real world” relevance of license provisions
  • Ethical issues in licensing

Who Should Attend

General practitioners, intellectual property specialists, corporate counsel and others who need to know the basics of how to license and protect their intellectual property.

Special Features

Live Webcast - Simultaneous live webcast of the San Francisco session is available for individual viewing. Webcast participants will receive streaming audio and/or video of the program, view and print the Course Handbook, and have the ability to submit questions electronically.

For more information click on the link to the Live Webcast at the top of the page.

Special Bonus to all Registrants

All attendees will receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment the program and to stand alone as a permanent reference. PLI's Course Handbooks represent the definitive thinking of the nation's finest legal minds, and are often the standard reference in the field.

Please Note: Webcast attendees will receive a downloadable version of the Handbook one business day prior to the program.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount.  For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Schedule

Please plan to arrive with enough time to register before the conference begins. A continental breakfast will be available upon your arrival.

Day One: 9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00  Introduction

Ian N. Feinberg

9:15  Trademark Licensing

  • Rationale for licensing
  • Fundamentals of a trademark license
  • Key provisions and practical considerations
Sally M. Abel 

10:15  Copyright Licensing

  • Rationale for licensing
  • Fundamentals of a copyright license
  • Key provisions and practical considerations
Cydney A. Tune 

11:15  Break

11:30  Rights of Publicity and Entertainment Licensing

  • Rights of publicity
  • Celebrity licensing
  • Television and movie licensing
  • Special issues for User-Generated content and the Internet
William Sloan Coats 

12:30  Lunch

Afternoon Session: 1:45 p.m. - 5:00 p.m.

1:45  Open Source Licenses

  • Varying terms in open source licenses and their impacts
  • Quality, security, support, and compliance issues in open source licenses
  • Key provisions and impact of GPLv3
  • Litigation and enforcement activity involving open source licenses
  • Business models based on open source technology
Robin J. Lee; Alan Stern

2:45  Patent and Technology Licensing

  • Standard clauses and variations
  • Strategies for exploiting technological property rights
  • Negotiating a royalty and constraints on licensing restrictions
  • Handling patent licensing issues in the context of joint development and software integration projects
  • Coordinating patent licenses with software and database licenses
Michael A. Molano

3:45  Break

4:00  Ethical Issues in Licensing

  • A discussion of potential ethical issues that arise in the licensing arena and how to handle them
Paul W. Vapnek 

5:00  Adjourn

Day Two: 9:00 a.m. - 4:45 p.m.

Morning Session: 9:00 a.m. - 12:15 p.m.

9:00  International Considerations in Licensing
  • How to approach the licensing of a property on a worldwide scale
  • Special provisions to be included in foreign licenses
  • Enforcement and protection of rights

Maureen S. Dorney

10:00  Antitrust Issues in Licensing

Identifying and avoiding antitrust problems often encountered in the negotiation and drafting of license agreements, standard setting organizations, and patent litigation settlements

Ian N. Feinberg 

11:00  Break

11:15  Bankruptcy Issues in Licensing

  • The rights and remedies in the event of the licensor or licensee's bankruptcy
  • Negotiating tips to deal with the contingency of bankruptcy
Lillian Stenfeldt 

12:15  Lunch

Afternoon Session: 1:30 p.m. - 4:45 p.m.

1:30  Drafting for Litigation 

  • Hear from a litigator what happens when the agreement has to be enforced
  • How to draft boilerplate for the litigators
Ian N. Feinberg  

2:30  A Mock Negotiation of a License Agreement
  • Putting it all together; a simulated negotiation of a license agreement
  • Drafting techniques and suggestions for specific clauses
  • Explanation of the “real world” relevance of license provisions
  • Pointers on negotiation techniques to develop compromises
  • Identification of typical business terms
Gregory J. Battersby; Leonard T. Nuara

3:30  Break

3:45  A Mock Negotiation of a License Agreement (continued)

4:45  Adjourn 

Faculty

Chairperson(s)

Ian N. Feinberg, Mayer Brown LLP

Speaker(s)

Sally M. Abel, Fenwick & West LLP
Gregory J. Battersby, Grimes & Battersby, LLP
William Sloan Coats, Kaye Scholer LLP
Maureen S. Dorney, Paradigm Counsel LLP
Robin J Lee, Cooley Godward Kronish LLP
Michael A. Molano, Sheppard Mullin Richter & Hampton LLP
Leonard T. Nuara, Greenberg Traurig, LLP
Lillian Stenfeldt, Sedgwick Detert Moran & Arnold LLP
Alan Stern, Senior Corporate Counsel - Acquisitions, Investments & Alliances, Cisco Systems, Inc.
Cydney A. Tune, Pillsbury Winthrop Shaw Pittman LLP
Paul W. Vapnek, Townsend and Townsend and Crew LLP

Program Attorney(s)

Tamara C. Kiwi, Program Attorney, Practising Law Institute

CLE Credit

PLI's live programs are approved in all states that require mandatory continuing legal education for attorneys. 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.

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.

Travel Information

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800.

San Francisco Hotel Accommodations

The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.

Due to high demand we recommend reserving hotel rooms as early as possible.