Law Seminars International Presents

The Comprehensive Workshop on

Advanced IP Licensing Transactions

Business and Legal Issues

June 25, 2004
Renaissance Atlanta Downtown Hotel in Atlanta, GA
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Who Should Order Homestudy

In-house counsel, IP lawyers, CFO’s, CPA’s, CIO’s and technology professionals.

Why Order

"Agreements for the licensing of intangible assets involve many unique issues. Business people and attorneys involved in licensing transactions need a solid working knowledge of the business and legal factors that must be dealt with when negotiating license agreements. This workshop convenes the region’s leading licensing professionals to discuss the business and legal issues that arise in licensing transactions, including business and economic perspectives, tax, branding and content clearance implications, international licensing factors and the impact of insolvency of a party." ~ Program Co-Chairs: Michael L. Bishop, Esq. and James Steinberg, Esq.

What You Will Learn

Trends and the latest thinking on negotiating & drafting licensing agreements - antitrust and misuse issues in complex licensing - IP management strategies - international transactions involving the import or export of technology - content licensing - trademarks & branding - valuation and alternative royalty structures - maximizing the bottom line and receiving full value

Agenda

Friday, June 25, 2004
8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Michael L. Bishop, Esq., Program Co-Chair
 BellSouth Intellectual Property Corporation / Atlanta, GA
  James L. Ewing, IV, Esq., Program Co-Chair
 Kilpatrick Stockton, LLP / Atlanta, GA
8:45 am Negotiating and Drafting Licensing Agreements
  Trends in transactional models and current thinking on key terms such as required consents, indemnifications
  David Scott Teske, Esq.
 Alston & Bird, LLP / Atlanta, GA
  Antitrust and misuse issues in complex licensing
  Gordon T. Arnold, Esq.
 Arnold & Ferrera L.L.P. / Houston, TX
10:15 am Break
10:30 am IP Management Strategies
  A conversation about the best internal processes and procedures for both licensor’s and licensee’s
  Michael L. Bishop, Esq., Program Co-Chair
 BellSouth Intellectual Property Corp. / Atlanta, GA
  James L. Ewing, IV, Esq., Program Co-Chair
 Kilpatrick Stockton, LLP / Atlanta, GA
11:30 am International Transactions
  Special issues for multinational transactions involving the export or import of technology
  Raymond Van Dyke, Esq.
 Nixon Peabody LLP / Washington, DC
12:15 pm Lunch (on your own)
1:30 pm Content Licensing
  Issues and strategies related to obtaining rights to media and other content
  Joseph W. Looney, Esq.
 Adams and Reese LLP / New Orleans, LA
2:15 pm Trademarks and Branding
  A conversation about strategies for maximizing the value of trademarks and terms to include and avoid in trademark licensing agreements
  Elizabeth A. "Betty" Morgan, Esq., Moderator
 Hunton & Williams LLP / Atlanta, GA
  James Reed, Esq., Managing Director of Trademark Licensing
 BellSouth Intellectual Property Marketing Corporation / Atlanta, GA
  Joan L. Dillon, Esq.
 Joan Dillon Law, LLC / Atlanta, GA
3:30 pm Break
3:45 pm Licensing Economics
  Valuing intellectual property; alternative royalty structures
  David A. Kennedy, CPA
 Intellectual Property Asset Corporation / Atlanta, GA
4:15 pm Maximizing the Bottom Line and Receiving Full Value
  Tax issues: Tax planning for offshore intellectual property transfers and other sophisticated tax strategies
  Joseph B. Darby, III, Esq.
 Greenberg Traurig LLP / Boston, MA
  Avoiding problems arising from licensing with troubled companies: Issues related to the uncomfortable interface between intellectual property law and insolvency law
  Gary K. Saidman, Esq.
 Kilpatrick Stockton LLP / Atlanta, GA

Cancellation

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

Continuing Education Credits

Law Seminars International self-certifies CLE credits for Washington, California, and Alaska. For other locations, we automatically seek CLE credit approval for the state in which a seminar is held. On request, we will apply for credits from other bar associations or the accrediting bodies for other professions. The current credits status for this program is GA CLE 7 | CA MCLE 7.25 | LA CLE 7 | NY CLE 8 (0 ethics; non-transitional | OH CLE 7(#000142980) | TN CLE 7 (#031945) | TX CLE 7 (#000063619) | WA CLE 7 (#121101) | WI CLE 8

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $605. The 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 (which ever is later).
Order Homestudy

Faculty Bios

Michael L. Bishop, Program Co-Chair, Vice President and General Counsel to the BellSouth Intellectual Property Corporation, practices in the areas of intellectual property, licensing, commercial transactions, and related matters.

James L. Ewing IV, Program Co-Chair, is a member of the firm's Executive Committee. His practice focuses on IP strategy, patent litigation and patent portfolio prosecution and management. In technology Mr. Ewing's experience includies medical devices, elecronic commerce, telecommunications and software technologies, carpet and textile products and equipment, and respresenting technology-based start-up companies.

Elizabeth A. "Betty" Morgan, a partner at Hunton & Williams LLP, concentrates her trial practice on the prosecution, enforcement and defense of trademark rights, trade secrets, copyrights, covenants-not-to-compete and patents in litigation. She also advises clients about their respective IP rights in situations involving traditional, as well as e-commerce. She assists clients with branding issues, including trademark selection, protection and licensing.

Gordon T. Arnold, of Arnold & Ferrera, L.L.P., has been the Attorney in Charge of multiple cases involving patents and other forms of intellectual property and antitrust. He has represented clients in extensive licensing, application, and litigation work — domestically and abroad. He is a Member by examination of the Chartered Institute of Arbitrators, a certified mediator, and serves as an arbitrator and advocate in commercial arbitrations and domain name matters as well.

Joseph B. Darby, III, is a shareholder in the Boston office of Greenberg Traurig LLP. He is a business lawyer, with a special expertise in tax law, who represents a wide variety of corporations and high net-worth individuals in business transactions and before federal and state taxing authorities. He is also a frequent writer and lecturer on tax-related issues.

Joan L. Dillon, of Joan Dillon Law, LLC, has specialized in the practice of trademark and copyright law and related areas of practice for over 35 years. She is, and has been listed in The Best Lawyers in America, Atlanta Magazine’s “Best Lawyers,” and International Who’s Who of Business Lawyers/Trademarks. She served for 18 years, as in-house trademark counsel to three Fortune 500 companies, and was principal U.S. Trademark counsel to the Los Angeles Olympic Committee and the Atlanta Committee for the Olympic Games.

David A. Kennedy is the Founder, President and CEO of Intellectual Property Asset Corporation. He has substantial experience in a broad range of commercial, financial and intellectual property engagements. He also has a significant amount of experience providing strategic intellectual property services including business plan development, strategic and enforcement licensing program implementation, license/contract negotiations and technology transfer transactions.

Joseph W. Looney has been engaged in civil law and litigation practice since 1976. He joined Adams and Reese LLP as a partner in 1991 and works in the areas of intellectual property and commercial litigation. Mr. Looney provides service in the areas of patent law, trademarks, trade secrets, technology, computer law and other intellectual property matters.

James Reed has lead BellSouth’s "Brand Leveraging" efforts as the Managing Director of Trademark Licensing for BellSouth Intellectual Property Marketing Corporation since 2001. Prior to joining BIPMARK, he served as General Counsel to Truckbay.com and practiced corporate and technology law at Troutman Sanders, LLP.

Gary K. Saidman, a partner with Kilpatrick Stockton LLP, is a member of the firm’s Corporate Section and Technology Group, where he specializes in corporate, international, and technology commercialization matters, including licensing, outsourcing, technology development arrangements, strategic partnerships and other similar commercial transactions. He is also chair of the firm’s Privacy Group, which focuses on issues related to the collection and use of personal information and other data.

David S. Teske is a member of Alston & Bird LLP’s Intellectual Property-Transactional Group, Atlanta. His practice is concentrated in complex transactions involving the exploitation, leveraging and transfer of intellectual property rights. He works with all types of clients, from Fortune 50 corporations to start-ups.

Raymond Van Dyke, a partner in the Washington, D.C. office of Nixon Peabody LLP, focuses his practice in technology and intellectual property counseling, procurement, licensing, and litigation in federal courts and the U.S. International Trade Commission. He represents companies and universities in the biotechnology, pharmaceutical, medical, chemical, software, financial services, telecommunications, Internet, and digital industries, both domestic and international, and in emerging and converging areas, such as bioinformatics, nanotechnology, proteomics, and computational analysis.