Law Seminars International Presents: A Comprehensive Two-Day Conference on

IP Licensing in 2009
New legal, business and regulatory developments

(For this past program, we offer two options for purchase: a Homestudy (DVD and written materials) or written materials alone.)



March 30 & 31, 2009
Hilton Austin in Austin, TX

Who Should Order This Homestudy

In-house and private practice attorneys, CIOs, CFOs, CPAs and all IP and licensing professionals

Why Order

Licensing deals are the centerpiece of the information economy and a multitude of legal issues can arise in today's complex licensing transactions. The parties must create a well-drafted document to meet their business objectives. Licensing professionals advising on transaction structure and contract terms need to understand the nature of the parties' business activities, and business people should have at least a basic understanding of the legal issues.

This conference offers licensing executives and attorneys insiders' knowledge of business and legal factors that must be addressed to achieve a mutually beneficial licensing arrangement.

A distinguished faculty of leading licensing professionals will discuss the latest developments in the law, licensing strategies, marketing, regulatory developments, risk allocation, transactions involving open source software, licensing structures and international transactions.

Don't miss this opportunity to hear the latest on IP Licensing from leading national experts.

~ Thomas L. Crisman, Esq., Jeff C. Dodd, Esq. and Raymond T. Nimmer, Esq., Program Co-Chairs

What You Will Learn



Agenda

Monday, March 30, 2009

8:00 am

Registration and Continental Breakfast

 
8:30 am

Introduction and Overview

Thomas L. Crisman, Esq., Program Co-Chair
McKool Smith PC / Dallas, TX

Jeff C. Dodd, Esq., Program Co-Chair
Andrews Kurth LLP / Austin, TX

Raymond T. Nimmer, Esq., Program Co-Chair
University of Houston Law Center / Houston, TX

 
8:45 am

Lessons From the World of Advertising: Risk and Reward in User-Generated Content Promotions and other Cutting Edge Marketing

Challenges of reaching consumers in a new media world; emerging advertising issues, including viral and word of mouth marketing, stealth advertising, and peer-to-peer endorsements; user-generated content, including immunity under the DMCA and the CDA

Jeffrey A. Greenbaum, Esq.
Frankfurt Kurnit Klein & Selz PC / New York, NY

 
9:45 am

Managing IP Litigation and Licensing with Outside Counsel

In-house counsel's perspective on effective strategies for managing outside counsel, controlling costs, achieving positive business solutions in complex IP licensing and litigation matters

Jennifer B. Wuamett, Esq., Vice President & Chief Intellectual Property Counsel
Freescale Semiconductor, Inc. / Austin, TX

 
10:30 am

Break

 
10:45 am

Keeping on Top of the Substantive Law: Major Recent Patent Cases and Their Impact on Licensing Strategies

Litigator's perspective on the key cases and what they mean

J. Roger Williams, Jr., Esq.
Andrews Kurth LLP / Austin, TX

Patent prosecutor's perspective on how that translates into prior art research, claim construction, internal and patent office process, and portfolio development and management issues

James W. Babineau, Esq.
Fish & Richardson P.C. / Austin, TX

 
12:15 pm

Lunch (on your own)

 
1:30 pm

Substantive Law (con'td): Developments in Trademark and Trade Secret Law with an Impact on Licensing

Trademarks

Jeff C. Dodd, Esq.
Andrews Kurth LLP / Houston, TX

Trade secret and confidential information licensing

Melissa LaBauve, Esq., Of Counsel
Haynes and Boone LLP / Houston, TX

 
3:30 pm

Break

 
3:45 pm

Technology Transactions and Acquisitions Involving Open Source Software: New Issues From GPL Version 3.0 and Other License Updates

Strategies for identifying, understanding and addressing issues posed by the increasingly material role played by open source software in licenses, mergers, acquisitions, financings, and other corporate and commercial transactions

Jason D. Haislmaier, Esq.
Holme, Roberts & Owen LLP / Denver, CO

 
5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by Andrews Kurth LLP and McKool Smith PC

 

Tuesday, March 31, 2009

8:00 am

Registration and Continental Breakfast

 
8:30 am

Licensing Implications of the Trend Towards Patent Litigation: Current Economy's Effects on Patent Portfolios

Mining your patent portfolio as a source for cash; doing the research, drafting and responding to the "demand" letter

Mark P. Wine, Esq.
Orrick, Herrington & Sutcliffe LLP / Irvine, CA

 
9:30 am

Litigation Considerations as You Roll Out Your Licensing Program

Before launching a licensing program, there are many litigation related issues to consider. Will the "demand" letter create D.J. jurisdiction? Do licensing rates affect the rates you can demand in litigation?

Russell T. Wong, Esq.
Wong Cabello Lutsch Rutherford & Brucculeri, LLP / Houston, TX

 
10:15 am

Break

 
10:30 am

Quanta v. LG Electronics: Exhaustion by First Sale and How that Affects Licensing

Did LG v. Quanta change the legal landscape, or is it exhaustion as usual? The Supreme Court indicated that the language of a license agreement might affect the outcome of the case, so how should licensing professionals adapt?

Doug A. Cawley, Esq.
McKool Smith PC / Dallas, TX

 
11:15 am

Current Best Thinking for Online Licensing Structures (Downloading, Streaming, Subscription, Ad-Supported, Peer-Enabled, Ring Tones, Wallpaper, IPTV, etc.)

Upload licenses, download licenses and access contracts; basic contract terms; online security issues; warranties; accounting and audits; default and remedies; what you need in the contract to get the results you want

Lorin Brennan, Esq., Principal and Co-Founder
Gray Matter LLC / Newport Beach, CA

 
12:00 pm

Lunch (on your own)

 
1:15 pm

Regulatory Developments Impacting Licensing

A variety of issues not directly tied to, but impacting licensing transactions, including payment system issues, developments in general contract law, arbitration clauses, choice of forum clauses, and data protection

Holly K. Towle, Esq.
K&L Gates LLP / Seattle, WA

 
2:00 pm

Optimizing Royalty Terms; Audits and Alternative Structures

Properly designing running royalties and allocating market risk to fit the commercial objectives; avoiding problemtaic licensing provisions; tips for effective implementation to ensure full receipt of revenues; designing effective remedies clauses

Robert B. Leonard, Esq.
Faegre & Benson LLP / Minneapolis, MN

 
2:45 pm

Break

 
3:00 pm

The Evolving Anatomy of a Complex License: How Themes and Structures are Changing in Response to Recent Cases and New Business Models

Licensing concepts and transactions in response to changing liscensing case law and trends; dissection of a sample document for a sample transaction with comments on both good and problematic provisions

Raymond T. Nimmer, Esq., Program Co-Chair
University of Houston Law Center / Houston, TX

Jeff C. Dodd, Esq., Program Co-Chair
Andrews Kurth LLP / Houston, TX

Holly K. Towle, Esq.
K&L Gates LLP / Seattle, WA

 
4:30 pm

Evaluations & Adjourn

 


Cancellation

There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders

Continuing Education Credits

This program qualifies for 12.75 TX CLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.



Cost

Our complete Homestudy Course, consisting of a DVD recording and the written course materials, is available for $1255. The written course materials alone are available for $100. We will ship your Homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (whichever is later).
Order Homestudy



Faculty Bios

Thomas L. Crisman, Program Co-Chair, a principal at McKool Smith PC, focuses on patent licensing and IP litigation. He also drafts and prosecutes patent applications in the fields of electronics, telecommunications, computer software and hardware.

Jeff C. Dodd, Program Co-Chair, partner at Andrews Kurth LLP, focuses on international IP and information transactions, IP commercialization strategies and registering, enforcing and licensing IP rights. He is listed in Best Lawyers in America and Chambers' Clients Guide to Leading Lawyers for Business.

Raymond T. Nimmer, Program Co-Chair, Dean and Leonard Childs Professor of Law at the University of Houston Law Center and co-director of the Houston IP and Information Law Institute has written more than twenty books and numerous articles, including a three-volume treatise on Information Law, a multi-volume book on the Law of Computer Technology and a treatise on Modern Licensing Law.

James W. Babineau, principal at Fish & Richardson P.C., advises clients on the protection and licensing of their IP and the avoidance of infringement risks, and manages client patent portfolios in electrical and mechanical technology areas.

Lorin Brennan, Principal and Co-Founder of Gray Matter LLC, has written the industry standard international licensing agreements for entertainment products. He specializes in designing and implementing intelligent software solutions for critical business needs.

Douglas A. Cawley, shareholder at McKool Smith PC, focuses on Intellectual Property litigation, including disputes over patents, copyrights and trademarks. He is listed in the Best Lawyers in America for IP, Chambers USA, and also listed as a "Super Lawyer"..

Jeffrey A. Greenbaum, partner in the Advertising Group at Frankfurt Kurnit Klein & Selz PC, counsels on advertising, promotion, Intellectual Property and branded entertainment matters. He is a director of the Promotion Marketing Association and a former chair of the New York City Bar's Committee on Consumer Affairs, and is listed in Chambers USA.

Jason D. Haislmaier, partner at Holme Roberts & Owen LLP, works with emerging and established companies in the area of technology and intellectual property transactions.

Melissa LaBauve, counsel in the IP Practice Group of Haynes and Boones LLP, focuses on all aspects of trademark and brand management, domain name disputes and protection of IP rights.

Robert B. Leonard, partner at Faegre & Benson LLP, is a member of the firm's IP group and is the chair of the firm's IP transaction practice. He focuses on computer- and software-related technology.

Holly K. Towle, partner at K&L Gates LLP, focuses on technology, licensing, electronics in commerce and data privacy and security. She wrote "The Law of Electronic Commercial Transactions" and is listed in Guide to the World's Leading Technology, Media & Telecommunications Lawyers and The Best Lawyers in America.

J. Roger Williams, counsel at Andrews Kurth LLP, focuses his IP litigation practice on trademark and domain name disputes, patent infringement, invalidity, inventorship disputes, misappropriation of trade secrets, breach of development, licensing and supply agreements.

Mark P. Wine, partner at Orrick, Herrington & Sutcliffe LLP, is a member of the Intellectual Property Group and focuses on discovery, prior art research, pretrial, jury and bench trial work and appeals.

Russell T. Wong, partner at Wong Cabello Lutsch Rutherford & Brucculeri, LLP, focuses on IP licensing/opinions and general IP counseling, including patent portfolio strategy and development. He is named in The Best Lawyers in America and listed as a "Super Lawyer".

Jennifer B. Wuamett, Vice President & Chief Intellectual Property Counsel at Freescale Semiconductor, Inc., focuses on patent procurement and portfolio management, IP licensing, enforcement, defensive matters, transactional matters, trademark legal matters, and management of both internal and external legal counsel. She was selected as one of the "50 Women Worth Watching in 2007" and as one of 30 "Extraordinary Women in Texas Law" by the Texas Lawyer.