Law Seminars International Presents: The Fourth Annual Advanced Conference on Current

IP Licensing 2009
Major new cases business structures and regulatory developments

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



August 20 & 21, 2009
Washington State Convention and Trade Center in Seattle, WA

Who Should Order This Homestudy

In-house counsel, IP lawyers, CIOs, CFOs, CPAs and all licensing professionals

Why Order

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

This conference will provide licensing executives and attorneys with an opportunity to develop a solid working knowledge of the business and legal factors that must be addressed to achieve a mutually beneficial licensing arrangement.

We have assembled this distinguished faculty of leading licensing professionals to discuss the latest developments in the law, licensing strategies, due diligence and effective rights transfer mechanisms, pricing and special issues for technology transfers, transactions involving open source software and international transactions.

~ Program Co-Chairs: Jeff C. Dodd, Esq. and Raymond T. Nimmer, Esq. and Holly K. Towle, Esq.

What You Will Learn



Agenda

Thursday, August 20, 2009

8:30 am

Introduction and Overview

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

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

Holly K. Towle, Esq., Program Co-Chair
K&L Gates LLP / Seattle, WA

 
8:45 am

Current Themes in Complex Licensing and What Recent Cases Tell Us

Licensing concepts and transactions in response to changing licensing case law and trends; standards setting; business structures

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

 
9:30 am

Keeping on Top of the Substantive Law: Developments in Copyright, Trademark and Trade Secret Law with an Impact on Licensing

Intellectual property concepts in response to recent case law and licensing activities

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

 
10:30 am

Substantive Law (con't): Patent Law Developments With an Impact on Licensing Strategies

Update on status of Bilski related cases and en banc decisions in 2009

Heidi Keefe, Esq.
White & Case LLP / Palo Alto, CA

The intersection of antitrust law and IP protection: Recent antitrust cases involving standards setting and patent pools; patent tying misuse and exhaustion; recent EU Commission actions; where Asian countries are heading on antitrust

David C. Lundsgaard, Esq.
Graham and Dunn / Seattle, WA

 
12:00 pm

Lunch (on your own)

 
1:15 pm

Optimizing Royalty Terms; Audits and Alternative Structures

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

Peter J. Kinsella, Esq.
Faegre & Benson LLP / Denver, CO

 
2:00 pm

Technology Acquisitions and Transactions Involving Open Source Software

Implied licenses for patents; integrating open source into proprietary software; licensing out; licenses with patent triggers; preparing for joint ventures and M&A transactions; effective compliance programs

Jim Markwith, Esq., Senior Attorney
Microsoft Corporation / Redmond, WA

 
2:45 pm

Break

 
3:00 pm

Lessons from Cutting Edge Business Models and Licensing Deals in the Gamer Technology World

Player demographics; what they are buying; deal structures; distribution trends, new platforms; peripheral gaming on sites; evolving economics of digital distribution, impact of industry layoffs on content generation; emergence of independent developers

Seth J. Steinberg, Esq.
The Law Offices of Seth J. Steinberg / Mill Valley, CA

 
3:45 pm

Lessons from New Developments in Life Sciences Licensing Transactions

Global licensing strategy in current economy; out-licenses with foreign universities; development alliances where poor patent protection; indemnification of overseas clinical trials post-TeGenero; coordination of regulatory approval requirements

Joseph Piper, Managing Partner
Integra Ventures / SEATTLE, WA

 
4:30 pm

Adjourn

 

Friday, August 21, 2009

8:00 am

Registration and Continental Breakfast

 
8:30 am

International Developments in Intellectual Property Licensing

Initiatives at WIPO on International Intellectual Property management; UNCITRAL IP Annex on IP Secured Financing; UNIDROIT Model Law on Leasing (including software leasing); recent international accounting rules changes and impact on US royalty accounting

Rick L. Leitner, Esq.
Davis Wright Tremaine LLP / Seattle, WA

 
9:15 am

Emerging Issues in New Media Advertising Business Models and Transactions

eHavioral guidelines; tracking technologies; peer-to-peer advertising; changing regulatory enforcement issues under the Obama administration

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

 
10:00 am

Break

 
10:15 am

User Generated Content

YouTube; social networks (Facebook, blogs, list serves); self-regulatory user-generated principles; liability and immunity under Section 230 of the Communications Decency Act

Steve Tapia, Esq., Senior Attorney, Law and Corporate Affairs
Microsoft Corporation / Redmond, WA

 
11:00 am

Legal Issues Arising from Evolving Data Aggregation Technologies and Uses

Assessing the triggers for regulatory requirements and potential liability: Who provides the data? What information is collected? Where is information stored? When will data be destroyed? Why is data collected? How will it be used?

Hillery L. Nye, Esq.
Madrona Law Group LLC / Seattle, WA

Cari Benn, Esq., Attorney
Microsoft Corporation / Redmond, WA

 
12:15 pm

Lunch (on your own)

 
1:30 pm

Adapting to New Technologies: Pressure on Copyright Law from the Google Print Library and the Text-to-Speech Feature in Amazon's New Kindle

Update on the Google Print Library class action settlement; copyright issues arising from converting text to speech; implications of both cases for the future of copyright protection; possible new legislation to address issues

Kate Spelman, Esq.
Cobalt LLP / Berkeley, CA

 
2:15 pm

Other Regulatory Developments Impacting Licensing

Consumer Fraud & Abuse Act changes; developments in contract law; enforcement actions regarding "access controls" to online data; other developments

Holly K. Towle, Esq., Program Co-Chair
K&L Gates LLP / Seattle, WA

 
3:00 pm

Break

 
3:15 pm

Wrap-Up on the Anatomy of a Complex License: Updating your Skills for Efficient and Effective Negotiating and Drafting

Dissecting a sample document for a sample transaction: Comments on both good and problematic provisions on the wide variety of issues involved with complex licensing with particular focus on the provisions of most concern to the audience

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

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

Holly K. Towle, Esq., Program Co-Chair
K&L Gates LLP / Seattle, WA

Steven B. Winters, Esq.
Lane Powell PC / Seattle, WA

 
4:30 pm

Evaluations and Adjourn

 


Cancellation

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

Continuing Education Credits

This program qualifies for 12.25 WA 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, as a binder or a searchable CD, are available for $100. We will ship your Homestudy order via UPS ground within two weeks after the seminar or from the date we receive payment.
Order Homestudy



Faculty Bios

Jeff C. Dodd, Program Co-Chair, partner at Andrews Kurth LLP, focuses on international intellectual property and information transactions, intellectual property commercialization strategies and registering, enforcing and licensing intellectual property rights. He co-wrote "Modern Licensing Law" and is listed in Texas Monthly as a "Texas Super Lawyer".

Raymond T. Nimmer, Program Co-Chair, Dean and the Leonard H. Childs Professor of Law at the University of Houston Law Center, is also Co-Director of the Houston Intellectual Property and Information Law Institute. He co-wrote "Modern Licensing Law" and is listed in "Who's Who in Law" the "International Who's Who of Internet Lawyers" and the "International Who's Who of Business Lawyers".

Holly K. Towle, Program Co-Chair, 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 among the top 25 Information Technology lawyers in the Best of the Best USA 2008 and Guide to the World's Leading Technology, Media & Telecommunications Lawyers.

Cari Benn, Attorney at Microsoft Corporation, is counsel for the Advertiser and Publisher Solutions group, focusing on business development initiatives and strategies.

Jeffrey A. Greenbaum, partner in the Advertising, Marketing and Public Relations Group at Frankfurt Kurnit Klein & Selz PC and member of the Management Committee, counsels on advertising, branded entertainment and intellectual property. He is a member and former chair of the New York City Bar's Committee on Consumer Affairs.

Heidi Keefe, intellectual property partner at White & Case LLP, is a registered patent attorney focusing on patent litigation and jury trials, principally involving software and Internet issues. She was recently named one of the "Top 20 Lawyers Under 40", by the San Francisco and Los Angeles Daily Journal.

Peter J. Kinsella, partner at Faegre & Benson LLP and the firm's first chair of its Intellectual Property Transaction Practice, is a registered patent attorney who advises on intellectual property and technology related commercial transaction matters. He is listed in "The Best Lawyers in America".

Rick L. Leitner, partner at Davis Wright Tremaine LLP, focuses on intellectual property, contracting and alliance matters, including acquisition, development and commercialization of software, hardware and related computer technologies and services.

David C. Lundsgaard, shareholder and chair of the Antitrust and Complex Litigation Group at Graham and Dunn, focuses on antitrust, securities, intellectual property, consumer protection and commercial disputes. He is former chair of the firm's Litigation Department and of the Antitrust, Consumer Portection and Unfair Business Practices Section of the Washington State Bar Association.

Jim Markwith, Senior Attorney on Microsoft Corporation's Intellectual Property and Licensing Team, handles intellectual property due diligence for M&A activities and counsels product development teams on open source software. Previously, he was Corporate Counsel, World-Wide Products and Marketing for Adobe Systems, taught Protection of IP at Santa Clara University School of Law, and was Instructor of Economics at the United States Naval Academy.

Hillery Nye, founder of Madrona Law Group LLC, an intellectual property law firm serving the unique needs of high tech companies and new media service providers, is experienced in licensing transactions, representing large and institutional clients such as Microsoft and Viacom, as well as startups. She helps develop and negotiate progressive business agreements, design business models and develop legal strategies.

Kate Spelman, member of Cobalt LLP, is experienced in copyright, media, licensing and trademark issues. She advises on the development, production, sale and defense of non-patent intellectual property and is listed in "The Best Lawyers in America".

Seth J. Steinberg, attorney in private practice, is an interactive entertainment industry veteran. Previously, he was Director of Business Affairs and General Counsel for LucasArts. He is a "Northern California Super Lawyer."

Steve Tapia, Senior Attorney in Microsoft Corporation's Law and Corporate Affairs Department, leads its copyright group and focuses on entertainment, media and intellectual property law. Previously, he was Senior Director of Business Development for MSN's Entertainment Channel.

Steven B. Winters, shareholder at Lane Powell PC, leads the Intellectual Property Contracting and Licensing Practice, focusing on biotech, biomed, computer, consumer information, digital rights management, electronics, government, Internet, online privacy and security, wholesale and retail foods, construction, entertainment, franchising and venture capital investments.