Each year in April or early May, the American Bar Association organizes an event known as “ABA Day in Washington.” Leaders of the Association and of the various entities within the Association come to Washington for two days of discussions and meetings that are focused on legislative activities. The most important activities of ABA Day are visits with key members of Congress. Each year the ABA-IPL Section contingent uses this occasion to meet with key congressional decision-makers on matters relating to intellectual property.

This year’s event, held on April 18 and 19, was the tenth consecutive ABA Day in which the Section participated. Our delegation this year was led by Section Chair Susan Barbieri Montgomery, and included Immediate Past Chair Tony Figg, Section Secretary Rob Lindefjeld, Past Chair Bill LaFuze, Committee 103 Co-Chair Denise DeFranco, and Legislative Consultant Hayden Gregory.

The top leadership of the ABA always comes to Washington to lead the Association’s ABA Day efforts. ABA President Karen Mathis, House of Delegates Chair Laurel Bellows, and Executive Director Hank White were active participants this year. Other ABA entities, including numerous state delegations, also come to walk the halls of Congress to call upon their senators and House representatives to let them know the views of the Association on important matters before Congress. Those state delegations quite naturally reach out to meet with members of Congress from their own states. Remembering that “all politics is local,” the Section does not ignore that admonition from former Speaker of the House Thomas “Tip” O’Neal, and we do reach out to members of Congress from the states or congressional districts of our participating members.

However, the Section has found that the most productive contacts are with those members of Congress who occupy key positions with responsibilities for intellectual property matters. Our meetings therefore tend to be predominantly with senators, House members, and congressional staff on the House and Senate Judiciary committees, through which the vast majority of IP-related matters must pass.

By luck of timing, the long-awaited new patent law reform bills were introduced just in time to become the focal points of our discussions this year. Identical bills (H.R. 1908 and S. 1145) were introduced in the House and the Senate on April 18. Though long in development, the contents of the bills were kept under wraps by its principal authors, Senator Leahy and Hatch, and House IP Subcommittee Chairman Berman, until the eve of their introduction. We obtained an advance copy of the bills less than 48 hours before introduction. Most of the congressional offices with which we met had only the same or less advance notice, and were very anxious to hear the views of subject matter experts such as those in the Section’s delegation.

The delegation was able to meet with 10 congressional offices that are deeply involved in shaping intellectual property laws in the Congress, including meeting with 4 members of the House IP Subcommittee (A fifth, Rep. Howard Coble, the highest-ranking Republican member of the Subcommittee, was tied up on the floor of House with an hour-long series of votes, and had to be represented by staff. Such occurrences are common in the schedules of congressional members, and the Section was fortunate that the scheduled meeting with Mr. Coble was the only such casualty this year).

We have found from past ABA Day experiences that these congressional meetings are very valuable to the Section in pursuing our legislative agenda. We establish relationships with key decision-makers, and gain insight into the functioning of congressional legislative and political processes. This year’s ABA Day produced those same benefits. In addition, we believe that more than ever before, we obtained real substantive knowledge about the progress of an ongoing major IP legislative initiative, and were shown specific opportunities for the Section to contribute to further development of the legislation.

For example, we learned that certain provisions of the bills that we thought to be “a done deal” were not. This is particularly valuable information when it concerns matters where the Section believes that the bill in question can and should be improved. If in fact there is a “done deal” on an issue and no further change is possible, there is strong incentive to direct one’s energy and efforts to other issues which remain still open to change.

We also were able to identify specific issues with which individual members of Congress are struggling. In so doing, we received a number of requests to assist these decision-makers in formulating their own proposed solutions. We are following up enthusiastically on these requests, both to help shape the legislation and to strengthen our relationship with the individual legislators. By aggregating all the concerns that we heard, we have been able to identify a number of important patent reform issues that are short of final resolution, and to see where further legislative refinement of the provisions in (or missing from) H.R. 1908 and S. 1145 is possible. These important issues include post-grant opposition, apportionment of damages, and reform of inequitable conduct.

In the short time that has passed since ABA Day 2007, we have provided additional views to Congress on the first two of these three key issues, and we expect to be submitting shortly additional views on the third. This will be a submission directed to convincing Congress to include provisions to reform the treatment of inequitable conduct in the legislation. Section Chair Susan Montgomery’s letter to Senate Judiciary Committee Chairman Patrick Leahy on post-grant opposition, which is posted on the Section website, is an example of these important follow-up efforts.

ABA Day 2007 was very productive for ABA-IPL – and the experience further demonstrated the value to the Association and its component entities of such an outreach effort.

 

Section Co-Sponsors Teleconferences
on Two Supreme Court Decisions

The ABA Section of Intellectual Property Law and ABA Center for CLE present two important 90-minute CLE teleconferences/live audio webcasts in May on two recent Supreme Court decisions that will have an impact on the practice of patent law:

Microsoft v. AT&T: Does U.S. Patent Law Apply to Exported Software?
On April 30, 2007, in a 7-1 decision, the U.S. Supreme Court decided whether U.S. patent law applied to software exported overseas. Hear from the attorneys who represented AT&T and Microsoft in this important Supreme Court case, which could have a major impact on the U.S. technology industry and the enforcement of intellectual property rights abroad.

Thursday, May 24, 2007
1:00 - 2:30 PM ET
www.abanet.org/cle/programs/t07mat1.html

Patent Law After KSR v. Teleflex: Are Your Patents Still Valid?
On April 30, the Supreme Court issued a unanimous decision in KSR International Co. v. Teleflex, Inc. that criticized and modified the obviousness standard that has been used in patent cases for decades. The KSR decision may dramatically change patent law, and, many observers believe, make it more difficult to obtain new patents and protect existing patents.
(co-sponsored by the Section of Litigation)
Wednesday, May 30, 2007
1:00 - 2:30 PM ET
www.abanet.org/cle/programs/t07pla1.html

Attorneys who represented the parties in both cases will discuss the practical implications and impact of these two decisions. CLE credit is available in those states accrediting ABA teleconferences and live audio webcasts.

May/June IP Roundtables
The Intellectual Property Litigation Committee of the ABA Section of Litigation invites you to participate in the May/June 2007 Roundtables. The topic is “Who Is Liable for Speech In Cyberspace?”

The Roundtables are being held in many cities around the country in May and June. Please click on the link below for a complete listing of host cities and dates. If your city is not listed now, please check back over the next few weeks.

http://www.abanet.org/litigation/committees/intellectual/roundtables.html

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22nd Annual Intellectual Property Law Conference is a Smashing Success

The extraordinary programming at our 22nd Annual Intellectual Property Law Conference, held on April 12-14, 2007 at the Crystal Gateway Marriott Hotel in Arlington, Virginia attracted over 600 registrants— an increase of over 250 from last year.

Conference attendees heard from a varied and distinguished faculty that included judges from U.S. District Courts and the U.S. Court of Appeals for the Federal Circuit, government officials, mediators, academics, seasoned practitioners and in-house counsel. The Conference offered specialized tracks developed to address the specific needs of, and issues faced by, in-house counsel, trial lawyers specializing in the litigation of intellectual property disputes, solo practitioners and those prosecuting applications before the U.S. Patent & Trademark Office.

Conference programming offered continuing legal education in a wide array of diverse topics such as:

• the impact the U.S. Court of Appeals for the Federal Circuit has had on the development of patent law during its first 25 years
• how to manage digital music rights licensing
• current DMCA copyright issues
• the ramifications of the Supreme Court’s decisions in MedImmune, KSR and Microsoft
• novel issues raised by on-line gaming
• tips for setting up and managing a solo intellectual property practice
• how best to prepare critical witnesses for deposition and trial testimony in intellectual property disputes
• pitfalls to watch out for in targeted on-line advertising
• proposed changes to the U.S. Patent & Trademark Office’s patent rules
• how to argue injunctions in patent infringement matters post eBay
• the valuation and monetization of intellectual property, and
• emerging issues before the Trademark Trial and Appeal Board.

Judge Alvin A. Schall, U.S. Court of Appeals for the Federal Circuit introduced the speakers for the Thursday luncheon keynote presentation on the mandatory mediation program recently instituted by the U.S. Court of Appeals for the Federal Circuit. Chief Circuit Mediator James Amend and Mediation Officer Wendy Dean provided attendees with an overview of the Court’s mediation process and procedure, which are provided at no additional cost to appellants and appellees. The following day, Richard Cotton, Executive Vice President and General Counsel of NBC Universal described in stark terms the losses suffered by the U.S. economy due to counterfeiting and piracy and provided the audience with a compelling case for the need to make greater efforts to protect and respect all intellectual property rights.

It’s not too early to save the date and join us next year for the 23rd Annual Intellectual Property Law Conference to be held April 10 – 12, 2008 at the Crystal Gateway Marriott Hotel in Arlington, Virginia. In addition to addressing emerging substantive issues in intellectual property law, the Conference will again offer specialized tracks to meet the needs of, and address practice related issues faced by in-house counsel, solo practitioners, those practicing before the U.S. Patent & Trademark Office and those specializing in the litigation of intellectual property disputes.

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Session Highlights

Corporate Counsel Issues/Practical Tips of Value to Corporate Counsel
by Donna Suchy

Here’s a test – at what big event on Friday the 13th could you talk to the top IP attorneys of four large U.S. corporations? The ABA Corporate Session for and by Corporate IP attorneys and managers provided that opportunity at the conference Friday, April 13. Top IP attorneys from AT&T, Eastman Kodak, AOL, and Microsoft spent three hours discussing how a corporate attorney can protect and get the most value out of the IP portfolio he or she manages.

The near-capacity audience heard the stories and advice these attorneys shared in sessions moderated by Susan McGahan from AT&T and Donna Suchy from Eastman Kodak Company.

Abha Divine, President and CEO of AT&T Knowledge Ventures, described three approaches to enhancing IP Value. The first, “Defend and Protect,” is a reactive approach. “Develop and Drive” is a proactive approach for those that are in R&D or protection orientated. The “Market and Commercialize” approach goes beyond products to valuing all IP in a company’s portfolio. Each of these approaches, she explained, requires legal and financial support but also requires partnerships with R&D, business groups and management. To choose which is best in each circumstance Abha advises that three factors should be considered, the strategic fit of that IP asset to the whole, the financial implication of the transaction and the associated risk. Michael Lasinski, Managing Director of Ocean Tomo, then shared how IP auctions work and the trends he sees. Marc Pensabene of Fitzpatrick, Harper, Cella & Scinto shared the pros and cons to consider when a company decides to use litigation to achieve IP value.

David Stimson, Chief Trademark Counsel of Eastman Kodak Company, discussed various uses of trademarks and trade dress that may be available without an owner’s consent. Examples of permitted uses are fair use, parody, comparative advertising, repair and repackaging, artistic works and internet websites and search tools. All the permitted uses involve a balancing of two important interests – the property rights of the trademark owner and various public interests. None of these uses are applicable if they lead to a likelihood of confusion or a false impression of sponsorship or endorsement. David gave numerous Kodak examples that helped the audience understand the challenges.

Next, Lauren Fisher, Assistant General Counsel – Intellectual Property with AOL led us on a fast paced walk through the challenges the Internet offers to any IP attorney and included a discussion on ‘streaming’ which can be geofilterd by address as well as snaggable and embedded video players. Lauren recommended that the snaggable video allows companies to retain control over the videos they distribute or share with internet users such as bloggers. Lauren readily admitted that she was still called a “Blog killer” to some but she does her best to balance the needs of the Internet without limiting its flexibilities.

Finally, Anne Murphy Kelley of Microsoft called the Internet open “entropy” and shared how licensing can be innovative by paying attention to the needs of the participants. She shared the recent idea behind the Novell/Microsoft license that merged open source and licensed software. The Novell/Microsoft agreement allowed Novell to still service their clients and Microsoft to service theirs while doing both to their individual business models which for Novell included a General Public License (GPLv.2). This is an example of what creativity can bring to the table and how companies can continue to meet customer requirements while providing sound legal advice as only a corporate attorney can in this era of open innovation.

The complete presentations from these attorneys are available in the ABA Webstore. Digital streaming audio of the session will also be available for purchase with Audio-CLE credit in the near future. The Section will continue to provide sessions geared to corporate counsel at future meetings – we look forward to seeing you there.

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Out of the Frying Pan … Into the Fire… Sizzling IP Hot Topics
by Donna Gies

Heating up a Saturday morning with a “Hot Topics” panel for trademark and copyright law is an easy task. The issues move and change at a feverish pace, and the underlying facts of the cases that spawn the changes involve hot cars, lingerie, beer, coffee, robots, jeans with “flashing” flaps, adult entertainment, rock and roll memorabilia, fine art, conflicts between big guys and little guys and also big guys and big guys – just to name a few. The panelists deftly guided the audience through recent changes and identified areas which are likely to heat up in the coming days, months and year.

Carla Calcagno, Holland & Knight LLP, started the morning out with an overview of the “traditional” areas of trademark law noting how they are less and less traditional. Carla covered changes in the anti-dilution standard, aesthetic and utilitarian functionality doctrines, product vs. package distinctiveness, famous mark exemption to the territoriality principle and a clarification of First Amendment and nominative fair use issues associated with gripe sites.

Mary Innis, Loeb & Loeb LLP, picked up from there with a discussion of trademark issues in the online world, beginning with the split in the circuits regarding whether keyword advertising is “use in commerce.” Mary then proceeded to discuss classic fair use and descriptive use done in good faith, the three key elements of nominative fair use, and parody, where context is the key.

Jeffrey Cunard, Debevoise & Plimpton, agilely covered emerging copyright issues beginning with a discussion of the DMCA and whether it will provide a safe harbor for social networking sites. Jeffrey then reported on the many litigations pending against Google, some of the recent fair use cases, space-shifting, linking, legislative possibilities, and industry trends such as licensing vs. sale of content, and the future of digital rights management tools.

Hon. James R. Spencer, Chief Judge of the U.S. District Court for the Eastern District of Virginia, wrapped up the panel with an insightful summary regarding the pace of change in these areas and the increase in number of cases.

 

Section Director Betsi Roach Leaves the ABA

After eight years as Director of the Section of Intellectual Property Law, Betsi Roach is leaving the ABA. Betsi is taking on a new and exciting challenge as Executive Director of the Legal Marketing Association, based in Glenview, Illinois.

Under Betsi’s direction, the Section experienced a steady and significant growth in operations, service and benefits. A staff of four has grown to a staff of seven and her leadership has positioned the Section to do and offer even more to its members. Betsi’s dedicated contributions—and and the relationships she formed with the ABA, our members and our many publics—have helped build the Section’s pre-eminence. She has been instrumental in developing a sound financial position for our future.

Betsi has a long line of fans throughout the membership, and many of you who know her personally join us in thanking her and wishing her the very best.

Mike Winkler, Assistant Director for the Section, will serve as Interim Director. He can be reached at winklerm@staff.abanet.org. Tel. 312-988-5639.

 

Special Committee–463–Promotions and Marketing Law
Co-chairs Liisa Thomas and Nishan Kottanhachchi

Our committee hosted a series of brown-bag discussions in New York, Chicago, Atlanta, San Francisco, and Washington DC. Our goal was to increase awareness in major cities on local and state gift card regulation and escheat/unclaimed property laws, and to discuss the possibility of moving towards national regulation as opposed to individual state regulation. In preparation for the brown-bags, our subcommittee collaborated and put together sets of materials for each state. We delegated the tasks of researching relevant case law and statutes among the subcommittee members. We also formulated a set of questions for the state representatives or moderators to address, and submitted those questions to them prior to the brown-bag discussion. At many of the brown-bags, we had a representative from a local or state regulatory agency attending.

The subcommittee chair that spearheaded these brown bags was Andra Dallas. Brown bags were hosted by committee members Kari Moeller (Atlanta), Liisa Thomas (New York, Chicago, and San Francisco), and Nishan Kottanhachchi (DC). A total of about 50 people participated in the events.

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Section of Intellectual Property Law Cosponsors 2nd Annual PTO Design Patent Day
William T. Fryer III Co-chair, Section Committee 412 (Industrial Designs)

The ABA Section of Intellectual Property Law (ABA-IPL), joined with the American Intellectual Property Law Association and the Intellectual Property Owners Association to sponsor and organize the 2nd Annual U.S. Patent and Trademark Office (PTO) Design Day, held at the PTO on April 16, 2007. This annual event is an opportunity for practitioners to hear from the PTO, with ample time for questions from the audience and an exchange of views. Each of organization contributed financial support and speakers for the occasion. Design patent practitioners and design patent examiners also have a chance to discuss their work during the coffee breaks and lunch. Over 100 persons attended this conference. Darrel Mottley, Co-chair of Section Committee 412 (Industrial Designs) coordinated the arrangements for the Section.

The conference welcome was given by John Doll, Commissioner of Patents. He and Jacqueline Stone, Director of Technology Center 1700 and Design Group 2900 were instrumental in helping to set up this event. The morning session included reports on the state of Design Group 2900, design patent examiner training, impact and implementation of the Geneva Act of the Hague Agreement, and new eCommerce technology that has been applied to PTO design patent databases. The afternoon session focused on industry use of design patent protection, with presentations by representatives from Ford Motor Company, automobile manufacturer, and BUIT NY, a specialty consumer product company. The program concluded with a presentation by Perry Saidman on design patent enforcement and design protection needs, and a panel discussion on the topics presented throughout the day.

PTO Design Patent Day is an effective means of bringing together persons involved in making the design patent system work to help improve the system. The joint cooperation of the three sponsoring organizations shows that the design patent system is important to U.S. industry in a global economy.

All Section Members Invited to Attend

ABA-IPL Slates Summer Conference Events
and Programs at the 2007 ABA Annual Meeting

This year, instead of our stand-alone meeting traditionally held in June,  the ABA Section of Intellectual Property Law (ABA-IPL) is holding our summer meeting—and its full range of programs and events—in conjunction with the 2007 ABA Annual Meeting in San Francisco, August 9-14. This presents important new opportunities for all members to take advantage of our Section and all that the ABA has to offer.

The Section continues its commitment to delivering the finest educational programming and opportunities available anywhere for intellectual property law practitioners. Our comprehensive and exciting mix of continuing legal education programs, presenters, speakers, and social events makes this a must-attend meeting for members of the IP bar—now even more so.

A complete schedule of Section programs and events is on the Section website at www.abanet.org/intelprop/annual2007.

This year, registrants can choose from over a dozen IP-related CLE programs sponsored by or co-sponsored by the Section including:

• Business Success Using Open Source
• Emerging Antitrust and Misuse Theories Involving the Licensing and Enforcement of Copyrights in Cyberspace
• International Harmonization – Managing IP Assets on a Global Basis
• Patenting Tax-Related Inventions
• Patent Law Reform in the Peoples Republic of China
• Litigation Skills
• Hot Topics in Patent, Trademark and Copyright Law
• The Whole World is Watching! – Privacy, Copyright and Parental Control in the Age of YouTube, MySpace and Beyond
• Trademarks, Celebrities and the Good Deed: Using Celebrity Branding for the to Public Good

A unique feature of the Section’s annual meeting, the Business Session features debate and voting on the policy proposals presented by the Section’s committees. These debates play a central role in the Section’s policy-setting. In the past, topics have such as “first to file” versus “first to invent,” trade dress protection for product configurations, and file downloading have been debated and voted upon.

• This year, it’s your chance to hear leading IP attorneys present the issues of the day and to participate in this open forum setting.
• Incoming ABA President, William S. Neukom, former General Counsel of Microsoft Corporation, will deliver this year’s keynote address.
• The second part of the business session includes the election of Section leadership for the coming year.

Online Registration is now available at the ABA website at www.abanet.org/annual/2007.

Register for the meeting and reserve your hotel room online. You can also sign up the CLE All-Access Badge or individual program tickets, as well as Section ticketed events, and other ABA ticketed events, tours, receptions, etc.