Advanced Licensing Agreements 2008 (Live Webcast)

Live Webcast on February 28 - 29, 2008 (P.S.T.)

This is a webcast of the live San Francisco session.

Intellectual property transactions play a critical role across a variety of industries. Whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction. This program is designed to address some of the more complex and practical issues that arise in drafting and negotiating licensing IP licenses. This program will feature updates on current legal developments, best practices, negotiating frequently contested issues, identifying and avoiding common pitfalls, keeping the relationship on track, litigation planning and avoidance, and ethics. The speakers will illustrate both outside counsel and in-house perspectives.

• Patent and technology licensing
• Software licensing and open source issues
• Strategic alliances and other joint development agreements
• International licensing agreements
• Trade secret licensing
• Trademark licensing
• Content, entertainment and digital rights licensing
• Database licensing

This program is focused on those who have experience in the substantive areas of intellectual property and technology law and who devote a substantial amount of their practice to licensing.

• Avoiding the most frequently made mistakes
• Technology vs. IP vs. blended licenses
• Why patent licensing is different
• Understanding grant types and degrees of exclusivity
• Indemnification and change of control issues
• Negotiation strategies
• Comparing licensee and licensor perspectives

• Differences in protection from state to state
• Differences in enforcement from state to state
• Protecting the trade secret in case of unauthorized disclosure
• Drafting considerations and sample clauses
• Special considerations compared to licensing other
• IP asset types

Byron W. Cooper

11:15  Break

11:30  Strategic Alliances and Other Joint Development Agreements

• IP creation conflicts: Default laws vs. parties intentions
• IP allocation: Joint ownership vs. field-based ownership vs. separate entity
• IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
• IP de-allocation: Facilitating or inhibiting separation; bankruptcy
• Interplay with IP asset management
• Corporate vs. university partners
• War stories from real life deals

Joseph Yang

12:30  Lunch

Afternoon Session: 1:45 p.m. - 5:00 p.m.  (P.S.T.)

1:45  International Licensing

• Similarities and differences between domestic and international licensing
• Common pitfalls for U.S. lawyers doing foreign deals
• Licensing in Europe
• Licensing in Asia
• Cultural issues in international transactions

Simon Chalkley, John W. Schlicher

2:45  Break

3:00  Software Licensing and Open Source Issues

• Source code issues
• Representations, warranties and indemnification
• Revenue sharing and auditing
• Training and support
• Keeping the relationship on track
• Open source benefits and pitfalls

Mark S. Holmes, Christian H. Nadan

4:00  Trademark Licensing

• The latest on quality control considerations
• Bankruptcy related issues
• Sample licensing provisions
• Case law update and licensing implications
• Managing a trademark licensing program

Sally M. Abel

5:00  Adjourn

Second Day: 9:00 a.m. - 4:00 p.m.  (P.S.T.)

Morning Session: 9:00 a.m. - 11:45 a.m.  (P.S.T.)

• Old media vs. new media, e-publishing & Tasini issues
• Digital rights management (DRM) and related issues
• Licensing rights in preexisting content vs. newly created content
• Assignments vs. works made for hire
• Database protection under U.S. and EU law
• Key points in negotiating database licenses
• Collections of facts: Licensing raw data and issues of derivative works and compilations
• Recent developments in database protection and litigation

Kenneth M. Kaufman, Mark G. Tratos

10:30  Break

10:45  Breakout Sessions

I. Analysis of a Content License Agreement

• Walkthrough and mock negotiation of a complex content license agreement by an expert panel
• Structuring IP rights allocation
• Negotiating multimedia rights
• Allocating merchandising rights
• Negotiating creative control issues
• Funding and royalty sharing considerations
• Interplay of technology and content issues for digital content

Kenneth M. Kaufman, Thomas A. Magnani

II. Analysis of a Technology License Agreement

• Common pitfalls
• Confidentiality and trade secret issues
• Exclusivity
• Restricted fields of use
•  Specifications
• Warranties and indemnification

Scott J. Catlin, Mark S. Holmes, Marc P. Schuyler

11:45  Lunch

Afternoon Session: 12:45 p.m. - 4:00 p.m.  (P.S.T.)

12:45  Industry Issues and Trends

• Comparing recent licensing developments across different industries
• Computers / electronics
• Bio / pharma
• Manufacturing / consumer products
• Business / finance / outsourcing

Joe Eandi, Freddie K. Park, Ariel Reich

1:45  Break

2:00  Litigation Planning for Licensing Lawyers

• Warranties, indemnification and other frequently litigated provisions
• Pitfalls, and examples, of sloppy wording
• Contra proferentum and other contract interpretation doctrines
• Alternative dispute resolution
• Case law update
• Foreign litigants and/or venues

Ira J. Levy

3:00  Ethical Considerations in Licensing

• Drafting in anticipation and avoidance of litigation
• What happens when a friendly deal turns litigious
• Deceit and candor
• Cross-border transactions
• Communications with adverse parties

Mark G. Tratos

4:00  Adjourn

PLI makes every effort to accredit its Live Webcasts.  Please check the CLE Calculator above for CLE information specific to your state.

PLI's Live Webcasts are approved for MCLE credit (unless otherwise noted in the product description) in the following states/territories:

Alabama, Alaska, Arizona, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana¹, Iowa*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York², Ohio³, Oklahoma, Oregon*, Pennsylvania⁴, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.

*PLI will apply for credit upon request.

Arkansas, Mississippi, Ohio, Oklahoma, and Rhode Island: Audio-only live webcasts are not approved for credit.

¹Indiana: Considered a distance education course. There is a 6 credit limit per year.

² New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.

³Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.

⁴ Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.

Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon speakers.

Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.

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.