I. Patent: Are the Trolls Really Out of Control? Reflections on Recent Efforts to Limit “Abusive Patent Litigation”
Panelists will reflect on the implications of current administrative, legislative, and judicial efforts to reduce litigation by patent assertion entities. Topics to be discussed include; recent presidential remarks and executive actions against "patent trolls,” current legislative proposals, Vermont's new anti-patent trolling law, the Federal Circuit's perspective, the International Trade Commission’s response, and the potential impact on non-manufacturing entities from inventors to large corporations.
Brian Carroll, Level Up, Boston, MA
Suzanne Michel, Google, Washington, DC
Dean Watson, Dura Automotive, Auburn Hills, MI
Rich Rainey, General Electric, Fairfield, CT
William Sorrell, Vermont Attorney General, Vermont
Phyllis Turner - Brim, Intellectual Ventures
II. Trademark: Non-Traditional Trademarks & the Entertainment & Sports Industries Sponsored by the ABA Forum on the Entertainment and Sports Industries
Whether it's the Harlem Globetrotters' Sweet Georgia Brown or the ESPN Sports Center theme song, sound marks and other non-traditional trademarks, such as holographic marks, three dimensional marks, and colors have become an important means for entertainment and sports companies to build and exploit their company's brands. IP lawyers need to stay informed about developments in non-traditional marks to keep up with business realities and protect their clients' and companies' interests. Many countries have regimes that regulate non-traditional marks, and understanding the procedures required to protect a brand's unique sounds, shapes and other non-traditional attributes can provide an important competitive advantage.
Leonard Glickman, Cassels Brock & Blackwell LLP, Toronto, Canada
Anastasia Danias, National Football League, New York, NY
Manuela Macchi, Keltie LLP, London, United Kingdom
Douglas (Chip) A. Rettew, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC
III. Copyright: Copyright Fair Use Transformed? The Evolving Role of the First Factor in the 21st Century
Section 107 of the Copyright Act identifies four factors the court is to weigh in analyzing whether using copyright work is fair use. In 1990, Judge Pierre Leval wrote "Toward a Fair Use Standard," 103 Harv. L. Rev. 1111 (1990), in which he proposed the term "transformative use," in connection with fair use. Panelists will address the progression of fair use cases since the term “transformative” has become a significant test, whether the term needs clarification, if it is given too much weight, or whether another test would be more helpful. Recent cases involving transformative use will be discussed involving appropriation art, image indexing online, mass digitization of books, and news aggregating.
June Besek, Columbia Law School, New York, NY
Robert W. Clarida, Reitler Kailas & Rosenblatt LLC, New York, NY
Joseph Gratz, Durie Tangri, San Francisco, CA
Nancy E. Wolff, Cowan DeBaets Abrahams & Sheppard LLP, New York, NY
I. Patent: Staying Current in the World of Patent Litigation: A Year (and more) in Review
This “omnibus” program is for patent practitioners and in-house counsel alike will provide a high-level overview of the most recent major patent decisions from the Federal Circuit and Supreme Court and their impact. Specific topics and cases to be discussed include: (a) infringement - Akamai v. Limelight (divided infringement); Medtronic v. Boston Scientific (burden of proof); Global-Tech and its progeny (inducement); (b) patent eligibility under section 101, AMP v. Myriad; CLS Bank v. Alice Corp.; (c) inequitable conduct - post-Therasense; (d) claim construction - Lighting Ballast Control v. Phillips; and (e) NPE litigation - State court action brought by Vermont Attorney General against MPHJ Technologies .
Jonathan Muenkel, Encinitas, CA
Hon. Paul R. Michel (Ret.), Former Chief Judge, U.S. Court of Appeals for the Federal Circuit, Washington, DC
Matthew R. Blackburn, Locke Lord, San Francisco, CA
Greg Castanias, JonesDay, Washington, DC
Ha Kung Wong, Fitzpatrick Cella Harper & Scinto, New York, NY
II. Trademark: Best Practices in Filing & Managing Trademarks
Every trademark lawyer has a story or more about a lesson learned during the trademark prosecution process. Sometimes the process goes off without a hitch. More often than not, there are minefields in the road that keep us up at night. Whether you are a new, relatively new, or seasoned attorney, there is always something to be learned. Panelists will provide tips and strategies on guiding clients in selecting protectable trademarks, as well as preparing and managing the application process, and tips for those seeking international registrations.
Francine D. Ward, Law Offices of Francine D. Ward, Mill Valley, CA
Matthew D. Asbell, Ladas & Parry, New York, NY
Cheryl Black, Evergreen Enterprises, Richmond, VA
Erik Pelton, Erik M. Pelton & Associates, PLLC, Arlington, VA
III. Copyright 2013 At A Gallop:
This program is more than an update on the incredibly busy year it has been in copyright decisions. Speakers will walk attendees through decisions ranging from massive scanning projects, software, comics, television, music, and Broadway musicals to decisions from 2013 ranging from the District Court to the Supreme Court. Speakers will also connect the dots from these cases to the practice pointers attendees can use in their practice today.
Katherine Spelman, K&L Gates LLP, Seattle, WA
David Rein, Jr., Bruce Campbell Law Firm LLP, Kansas City, MS
I. Patent: International Trade Commission (ITC) in Flux: Learning from Recent Developments
Recently, the ITC has issued new rules and regulations, including a pilot program directed to reach early initial determination on issues such as domestic industry, importation and standing through expedited fact discovery and limited hearings. Additionally, the White House has issued various executive actions and legislative recommendations designed to protect innovators from frivolous litigation and ensure a high-quality patent system. A report was also released discussing Patent Assertion Entities (PAEs) and detailing the challenges posed and necessity for certain legislative action. Panelists will discuss the knowledge gained from these recent developments, including merits and drawbacks of the new rules and regulations and challenges faced by ITC practitioners.
Pallavi Seth, The Brattle Group, Washington, DC
Lynn Levine, Former Director of the Office of Unfair Import Investigations, Inc., Alexandria, VA (Invited)
Eric Namrow, Morgan, Lewis & Bockius LLP, Washington, DC
Karin Norton, Samsung Electronics America, Inc., Washington, DC
Kimberly Parke, Dickstein Sharpiro LLP, Washington, DC
II. Social Media: Promoting Progress in Social Media: Patentability & Copyrightability Issues
While many IP lawyers have focused their attention on user-generated content issues in social media, social media platforms are beset by patent and copyright issues of their own. In particular, a growing thicket of social media related patents have been developed, covering technologies from advertising and monetization to network administration and privacy controls, to traditional social media user experience functionality. Currently, the copyrightability of the application programming interfaces that social media platforms rely upon have been called into question, as well as other features of most social media platforms. This program will identify these issues and discuss how the patent and copyright laws approach the protection of these different elements. The question of whether or not copyright or patent protection (or both) is the appropriate mechanisms to incentivize further innovation among social media platforms will be explored.
Joshua L. Simmons, Kirkland & Ellis LLP, New York, NY
Robert Huise, Fenwick & West, Mountainview, CA
III. Ethics: Tough Calls: Exploring Gray Areas in Withholding Documents from Production Pursuant to the Attorney Client Privilege or Work Product Doctrine
Ethical issues associated with withholding documents from production, including the interplay between the rules of professional conduct, the substantive law on privilege, and limits on ethical advocacy will be explored during this program. Panelists will provide practical advice for in-house counsel and litigators regarding difficult issues and close calls that often arise during document review.
Sarah Guske, Cooley LLP, Bloomfield, CO
Hon. John M. Facciola, U.S. District Court for the District of Columbia, Washington, DC
Jonathan M. Redgrave, Redgrave LLP, Washington, DC
Hon. Francis M. Allegra, U.S. Court of Federal Claims, Washington, DC
Claire Hass, Google, Inc. Mountainview, CA
I. Patent: Patent Litigation 2.0: Patent System Improvements?
In October and November of 2013, House and Senate bills were introduced that contained several provisions alleged to improve the patent system. The policy considerations and practical implications of these provisions will be discussed. The panel will also discuss the landscape for future patent legislation not currently pending in the proposed bills.
Janet Hendrickson, Senniger Powers, LLP, St. Louis, MO
Robert A. Armitage, Marco Island, FL
Dana R. Colarulli, U.S. Patent & Trademark Office, Alexandria, VA (Invited)
Denise DeFranco, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC
Aaron Cooper, Covington & Burling, Washington, DC
II. Copyright: The Impact of Digital Media & Distribution on the Entertainment & Content Industries Sponsored by the ABA Forum on the Entertainment & Sports Industries
Current market trends in digital media and distribution impacting the entertainment and content industries will be provided and reviewed. Panelists will discuss topics including: digital media issues in license agreements, issues in applying old law to new media and technologies, the impact of social media and user-generated content, copyright issues such as the DCMA safe harbor, licenses vs. sales in digital media transactions, electronic publishing, music licensing in digital media, IP due diligence in digital media transactions, and recent litigation involving digital media.
Kenneth M. Kaufman, Manatt, Phelps & Phillips LLP, Washington, DC
III. Ethics: Practice & Risk Management for IP Lawyers: When Patent Lawyers are Sued-- How to Avoid Becoming a Client
Real world malpractice suits against top IP firms in the U.S. will be reviewed and explored by experienced panelists. Questions and issues to be covered include: what are the most common mistakes, what can be done to better manage the risk, what are the risk management practices and how to implement them at your firm, can alternate dispute resolution be built into engagement agreements, and what special client intake procedures mitigate risk.
Azuka Dike, Banner & Witcoff, Ltd.
Anthony Davis, Hinshaw & Culbertson, LLP, New York, NY (Invited)
Steven Becker, Vorys, Sater, Seymour and Pease LLP, Washington, DC
Eurlonda Skyles, Orrick, Herrington & Sutcliffe, Washington, DC
Michell Galloway, Cooley LLP, Palo Alto, CA