Friday, November 17, 2017, 12 noon - 1 p.m.
Presented by the Trade Secret Interest Group
This program offers 1 hour participatory MCLE credit.
This webinar will address the forensic side of IP theft, including the typical
timeline that unfolds after suspected/detected theft; the defensible
preservation of data sources; forensic investigation, including tools and
techniques; and the process for internal investigation when such theft has
taken place. The program will also touch on how to address forensics in the
context of settlement and remediation; and investigative challenges such as
encryption, BYOD policies, cloud based repositories, evidence eliminators and
secure communication apps. Finally, the program will touch on technical
solutions for protecting sensitive data. The content is highly relevant to
in-house counsel as well as outside counsel dealing with theft of IP issues.
Moderator: Angelique Kaounis
Speaker: Mark Clews READ MORE
As a Managing Director in Navigant's Legal Technology Solutions practice, Mark Clews has over 17 years’ experience providing expert advice to law firms and large corporations in relation to complex litigation proceedings. Mark specializes in the preservation and investigation of electronic evidence from digital devices, the interrogation of complex data sets and the end to end management of large scale electronic discovery projects. He has led investigations and electronic discovery projects on behalf of law firms, large corporations, regulators and federal agencies both in the European Union and the United States.
Monday, November 20, 2017, 12 noon - 1 p.m.
Presented by the International and Trademark Interest
This webinar will focus on what attorneys need to know to
their clients’ trademarks in Canada. The program will
begin with a
discussion of the most significant differences between US and
trademark practice (and trademark law) and include prosecution
situations where Americans are given preferential treatment by
Trademarks Office. The program will conclude with a summary of
under Canada’s impending new trademark law and important
takeaways for US
Moderator: David Tseng
Speaker: Philip Lapin READ MORE
Philip Lapin is recognized as one of Canada's leading trademark lawyers, and is the chair of the firm's Trademark Practice Group. With more than 20 years of experience, Philip is responsible for managing and providing strategic advice concerning the trademark portfolios for many Canadian and multinational corporations.
Philip has handled the clearance, prosecution and registration of thousands of trademarks, and has particular expertise in trademark opposition and cancellation proceedings before the Trademarks Office.
In addition, Philip files, prosecutes and advises clients with respect to all aspects of Canadian industrial design law and practice.
Philip is the author of the "CANADA" section of the INTA Country Guides.
Philip was an adjunct professor at the University of Ottawa's engineering school for many years, teaching trademark law to non-lawyers. Philip is also a frequent speaker and author on a wide variety of trademark-related topics.
Philip was awarded the Marie F. Morency prize for obtaining the highest mark in Canada on the patent drafting examination.
Wednesday, December 6, 2017,
number 855-520-7605, passcode
"All Hands" Copyright IG
conference call. On this call, we will discuss current cases and developments
copyright law. Each month a presenter will lead the discussion. We will
discuss opportunities to write articles, coordinate webinars, speak on
and participate in the IP section in other ways.
Please note: Our
monthly calls are the 1st Wednesday of every
Friday, December 8, 2017, 12 noon
Dial-in number 855-520-7605, passcode 1211276419#.
Monthly “All Hands” Licensing IG conference call. John Pavolotsky will present a hypothetical involving licensing and privacy issues. In addition, we’ll discuss upcoming webinars and conferences, opportunities for members to get involved and Hot Topics.
Please note: Our monthly calls are the 2nd Friday of every month.
This year’s IP Institute provided a wide range of cutting-edge and compelling presentations on patent, copyright, trademark, cannabis-related IP, privacy, technology transfer, licensing, entertainment, and more. The event also featured the always popular Vanguard Awards luncheon, honoring the accomplishments of our three award recipients from private practice, academia, and the judiciary., and a fun “Jeopardy-style” trivia contest. (See larger versions of the photos on our Facebook page.)
IP Institute Chair and Executive Committeee Chair Matthew Spark
Honorable Gerard F. Rogers, Chief Administrative Trademark Judge of the Trademark Trial and Appeal Board (TTAB), Warren L. Dranit, Matthew A. Powelson, Elizabeth Rest
Breakfast at the Institute
Honorable Gerard F. Rogers, Carole Handler
and Colleen V. Chien
December 31, 2017, is the deadline to register or re-register with The Copyright Office designation of agents to receive notifications of claimed infringement under the Digital Millennium Copyright Act (“DMCA”)
Who must designate an agent?
Any service provider (within the meaning of 17 U.S.C. 512(k)(1)) seeking the safe harbor protections of section 512 of the DMCA. Related or affiliated service providers that are separate legal entities (e.g., corporate parents and subsidiaries) are considered separate service providers, and each must have its own separate designation.
What if a service provider has previously designated an agent with the Copyright Office?
Any service provider that has previously designated an agent with the Office will have until December 31, 2017, to submit a new designation electronically through the new online registration system. Until that time, an accurate designation in the old paper-generated directory will continue to satisfy the service provider’s obligations under the DMCA. After that time, the designation will expire and become invalid, which could result in the service provider losing the section 512 safe harbor protections.
What is the consequence for choosing not to designate an agent or failing to keep a designation current and accurate (including failing to renew or re-register using the electronic system)?
Service providers risk losing the safe harbor protections of section 512 of the DMCA, leaving them potentially vulnerable to certain types of claims of copyright infringement.
On October 18, 2017, consistent with Executive Order 13777, “Enforcing
the Regulatory Reform Agenda,” and Executive Order 13771,
“Reducing Regulation and Controlling Regulatory Costs,” the PTO
proposed rules to revises the regulations concerning trademark interferences
codified at 37 CFR 2.91-2.93, 2.96, and 2.98. The goal is to identify and
propose regulations for removal, modification, and streamlining that are
outdated, unnecessary, ineffective, costly, or unduly burdensome.
The notice of proposed rulemaking published in the Federal Register (82 Fed.
Reg. 48469). Written comments must be received on or before November 17,
2017. For instructions on how to submit comments, see the Federal Register
The U.S. Copyright Office has submitted a letter to Congress reporting the
results of the Office’s public inquiry on establishing a pilot program
to facilitate the mass digitization of books and other copyrighted works. The
inquiry followed the June 2015 publication of the Office’s report on
Orphan Works and Mass Digitization, which proposed extended collective
licensing (ECL) as a means of enabling the large-scale clearance of rights
necessary for such projects. Because the United States lacks experience with
such a system, the report recommended that ECL initially take the form of a
limited pilot program. In addition, noting that stakeholder support is
essential for ECL to succeed, the Office published a Federal Register notice
inviting public input on the appropriate structure and operation of a pilot
program. In response, the Office received more than eighty written comments
from a wide range of interested parties.
In its letter, the Office reports that the comments indicate an overall lack
of stakeholder consensus on key elements of an ECL pilot program. Therefore,
the Office concludes that the submission of proposed legislation to Congress
would be premature at this time. The Office, however, continues to believe
that ECL offers a viable solution for mass digitization projects and stands
ready to assist stakeholders in developing consensus-based legislation should
Congress wish to pursue further discussion in this area.
The letter, public comments, and background material are available on the
Copyright Office website at
Continuing Education of the Bar, California (CEB) is extending some special discount offers to our section. As a member of the Section, you're eligible for:
Information about the section dues rebate program can be found on the CEB Web site.
We're very grateful for your membership in the Section.
As a token of that, we're offering self-study MCLE credit in the areas of Legal Ethics, Competence Issues, and Recognition and Elimination of Bias in the Legal Profession and in Society. The programs are posted in our Member's Only Area.
Simply watch the programs and keep track of having done so. You can report this to the State Bar when it's time to demonstrate your compliance with the MCLE requirements.
One hour of MCLE is available in the current issue of New Matter , the State Bar IP Section's quarterly magazine.
For the Spring issue, you can earn credit for the article Policing the Boundaries of Copyright: Is It Time for the Supreme Court to Step In? by William J. O'Brien. One hour of MCLE credit can be obtained by answering a set of True/False questions.
Log on to the webiste www.calbar.org/self-study for details. Watch for other MCLE credit available in future issues of New Matter.
Log into your profile and click on CLE Summary and Tracking Tool. This summary reflects all in person and online participatory classes completed through the State Bar of California.
Note: Future releases will allow you to manually add courses completed through other providers.
Even if this summary reflects you have completed the required 25 hours of MCLE within your compliance period, you must still formally report compliance by submitting your MCLE compliance declaration through My State Bar Profile .
Did you miss it?
What's a Brand Worth?
The importance of brand valuations for internal
decision making and rights enforcement, valuation
methodologies used for
various purposes, including mergers, litigation, and
bankruptcy, and how to
work with a valuation expert will be discussed. Speaker
Fernando Torres is
Chief Economist at IPmetrics LLC.
1 hour participatory MCLE credit
For other Intellectual Property Law Section programs, see www.calbar.org/online-cle and select Intellectual Property Law Section.
The IP Section is on Facebook and Twitter and LinkedIn.
We invite you to contact a member of the Executive Committee, or an Interest Group Officer. The IP Section has Interest Groups on:
Or contact the Editors of Inevitable Disclosure, Barbara Friedman and Matt Neco.
The Intellectual Property Law Section
The State Bar of California
180 Howard Street
San Francisco, CA 94105