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

Current Issues in Complex IP Licensing
Business and legal factors for licensing transactions

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

August 23 & 24, 2007
Renaissance Seattle Hotel in Seattle, WA

Who Should Order This Homestudy

In-house counsel, IP Lawyers, CIOs, CFOs, CPAs and 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 ensure that they will meet their business objectives. The licensing professionals advising on transaction structure and contract terms must understand the nature of the parties' business activities and the business people should have at least a basic understanding of the legal issues.

In developing this program, our goal was to provide licensing executives and attorneys with an opportunity to develop a more solid working knowledge of the business and legal factors that must be addressed to achieve a mutually beneficial licensing arrangement. We have assembled a group 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., Raymond T. Nimmer, Esq., and Holly K. Towle, Esq.

What You Will Learn


Thursday, August 23, 2007

8:00 am

Registration and Continental Breakfast

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, Director, IP & Information Law Institute
University of Houston Law Center / Houston, TX

Holly K. Towle, Esq., Program Co-Chair
Kirkpatrick & Lockhart Preston Gates Ellis LLP / Seattle, WA

8:45 am

Current Themes in Complex Licensing and What Recent Cases Tell Us

The shifting contours of licensing concepts and transactions in response to changing licensing case law and trends; business structures

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

9:45 am

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

The shifting contours of intellectual property concepts in response to recent case law and licensing activities

Raymond T. Nimmer, Esq., Program Co-Chair, Director, IP & Information Law Institute
University of Houston Law Center / Houston, TX

10:30 am


10:45 am

Substantive Law (con't): Major Recent Patent Cases and Their Impact on Licensing Strategies

Medimmune v. Genentech, Medimmune v. Centocor, and Aspex Eyewear, Inc., et al. v. Miracle Optics, Inc. on standing to sue; AT&T v. Microsoft on damages recovery

Ramsey M. Al-Salam, Esq.
Perkins Coie LLP / Seattle, WA

KSR v. Teleflex: KSR's challenge to the Federal Circuit's 20 year old teaching/suggestion/motivation test for obviousness in favor of a more restrictive test

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

12:00 pm

Lunch (on your own)

1:15 pm

Substantive Law (con't): The Intersection of Antitrust Law and Intellectual Property Protection

Special issues arising from antitrust; patent tying, misuse and exhaustion; patent pools; lessons from recent EU Commission actions against Microsoft; prospects for Japan and other countries following the EU lead

Darren Bush, Esq., Ph.D., Assistant Professor
University of Houston Law Center / Houston, TX

Richard M. Clinton, Esq.
Dorsey & Whitney LLP / Seattle, WA

2:15 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

3:00 pm


3:15 pm

Virtual Property: What Is It? Who Values It? How Do You License It? Who is Suing Whom Over It?

Is it a good, a service or information? Do you have to pay taxes? What will be the impact of this new concept on the law of property and other traditional areas of law?

Scott L. David, Esq.
Kirkpatrick & Lockhart Preston Gates Ellis LLP / Seattle, WA

3:45 pm

Technology Acquisitions and Transactions Involving Open Source Software: Practical Approaches and Solutions to the Pervasive Use of Open Source Software in IT Development Projects

How open source gets into a development project; integrating open source into proprietary software; licensing out; licenses with patent triggers; preparing for joint ventures and M&A transactions; effective compliance programs

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

Robert W. Gomulkiewicz, Esq., Director, IP Law and Policy Program
University of Washington School of Law / Seattle, WA

Jim Markwith, Esq., Open Source Software Licensing Counsel
Microsoft Corporation / Redmond, WA

Heather Meeker, Esq.
Greenberg Traurig, LLP / East Palo Alto, CA

5:00 pm

Reception for Faculty and Attendees

Sponsored by Andrews Kurth LLP and Kirkpatrick & Lockhart Preston Gates Ellis LLP


Friday, August 24, 2007

8:00 am

Registration and Continental Breakfast

8:30 am

On-line Licensing Structures (Downloading, Streaming, Subscription, Ad-supported, Peer-enabled, Ring Tones, Wallpaper, IPTV, etc.)

Upload licenses, download licenses and access contracts; basic contract terms; on-line 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
Gray Matter LLC / Newport Beach, CA

9:15 am

Payment Systems: Changes for Companies Processing License or Other Payments

Transformations occurring in payment systems; risks and new obligations for companies using Electronic Check Conversion; impact of shifting tides in the credit, debit and stored value card arenas

Holly K. Towle, Esq., Program Co-Chair
Kirkpatrick & Lockhart Preston Gates Ellis LLP / Seattle, WA

10:00 am

Developments in New Media Advertising

What's being tried, what's working and what's not; emerging legal issues in new forms of advertising, including viral marketing, word of mouth marketing and branded entertainment; hot button regulatory enforcement issues

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

10:45 am


11:00 am

Cross-Border Transactions with China

Getting to a meeting of the minds: What common U.S. licensing terms mean to the Chinese and tips for bridging the cultural gap

Lee Li, Esq.
Faegre & Benson LLP / Shanghai, China

11:30 am

Legal Ethics in a Digital Age

A walk through potential ethical problems of particular relevance for licensing attorneys

D. Peter Harvey, Esq.
Harvey Siskind LLP / San Francisco, CA

12:30 pm

Lunch (on your own)

1:45 pm

Trademark Licensing on the Internet: The Influence of the Big Three on Your Program

How should search engines, web linking, and new logo placement opportunities affect your trademark licensing program?

Todd S. Parkhurst, Esq.
Wildman, Harrold, Allen & Dixon LLP / Chicago, IL

2:30 pm

Copyrights on the Internet: "Tell Me it Isn't True"

The conflict among content owners, search engines, linking from web sites; practical solutions; online sleuthing/research; examples of brand exploitation

Thomas A. Smart, Esq.
Kaye Scholer LLP / New York, NY

3:15 pm


3:30 pm

Wrap-Up: Efficient and Effective Negotiating and Drafting: Anatomy of a Complex License

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
Kirkpatrick & Lockhart Preston Gates Ellis LLP / Seattle, WA

Lorin Brennan, Esq.
Gray Matter LLC / Newport Beach, CA

4:45 pm

Evaluations and Adjourn



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

Continuing Education Credits

This program qualifies for 13 WA CLE credits including 1 ethics. Upon request, we will apply for CLE credits in other states and other types of credits.


Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $1005. 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

Jeff C. Dodd, Program Co-Chair, partner at Andrews Kurth LLP, represents clients in registering, enforcing and licensing IP rights in corporate, securities, finance and intellectual property, technology and electronic commerce. He co-authored "Modern Licensing Law" and is listed in "Best Lawyers in America" and in "Chambers USA" for Leading Lawyers for Business.

Raymond T. Nimmer, Program Co-Chair, is Dean and the Leonard H. Childs Professor of Law at University of Houston Law Center and also Co-Director of the Houston IP and Information Law Institute. Co-Author of "Modern Licensing Law", he 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 Kirkpatrick & Lockhart Preston Gates Ellis LLP, is the Cross-firm Coordinator of E-merging Commerce Group and member of its Licensing Group and focuses on technology, intellectual property and electronics in commerce. She is included in the "Guide to the World's Leading Technology, Media & Telecommunications Lawyers", " International Who's Who Of E-Commerce Lawyers" and in e-commerce and banking sections of "The Best Lawyers in America".

Ramsey M. Al-Salam, partner at Perkins Coie LLP, focuses on intellectual property litigation and dispute resolution, with emphasis on patent, trademark and trade secret litigation. He is listed in "Chambers USA" for intellectual property lawyers and in "The Best Lawyers in America".

Lorin Brennan, Principal and Co-Founder of Gray Matter LLC, a software development firm that develops automated contracting and rights management software for intellectual property licensing, specializes in international intellectual property licensing.

Darren Bush, Assistant Professor at University of Houston Law Center, writes and lectures on antitrust law, economics, regulated and deregulating industries. He has written on antitrust subjects, including the relationship of intellectual property and antitrust law.

Richard M. Clinton, a partner at Dorsey & Whitney LLP, is Co-Chair of the firm's Antitrust Practice Group and has been involved in intellectual property cases that contain antitrust claims or counterclaims. He is a Fellow of the American College of Trial Lawyers, and named in "The Best Lawyers in America".

Scott L. David, partner at Kirkpatrick & Lockhart Preston Gates Ellis LLP, works with the electronic commerce, tax, and intellectual property practice and advises on international, federal and state taxation, compliance with federal and state privacy and data security laws and participation in standards setting organizations.

Robert W. Gomulkiewicz is a Professor of Law and directs the University of Washington School of Law's Graduate Program in Intellectual Property Law and Policy. Previously, he was Associate General Counsel at Microsoft providing legal counsel for development of their major systems software, desktop applications and developer tools software. He is co-author of "Intellectual Property, Software, and Information Licensing: Law and Practice".

Jeffrey A. Greenbaum counsels clients on advertising, branded entertainment and IP matters at Frankfurt Kurnit Klein & Selz PC. He is a member and former chair of the New York City Bar's Consumer Affairs Committee and also writes the monthly "Legalease" column in Shoot.

D. Peter Harvey, partner with Harvey Siskind LLP, focuses on intellectual property and commercial litigation in U.S. federal courts. He advises on intellectual property rights clearance, registration, enforcement and management.

Heidi Keefe, Intellectual Property partner in White & Case LLP, is a registered patent attorney focusing on patent litigation and jury trials. Recent trials include representing In-Three in IMAX v. In-Three, and Microsoft in Reiffin v. Microsoft. She was recognized as one of "The Bay Area's Best Lawyers" in "Bay Area Lawyer Magazine".

Peter J. Kinsella, chair of the Intellectual Property Transaction Practice at Faegre & Benson LLP, focuses on technology-related commercial transaction matters. He is listed in "Best Lawyers In America for Technology Law" as well as "Chambers USA" for Business and Intellectual Property.

Yiqiang (Lee) Li, partner in Faegre & Benson LLP's Shanghai Office, focuses on foreign investment and commercial matters, including advising clients on People's Republic of China Intellectual Property Rights enforcement and litigation matters and technology licensing projects.

Jim Markwith is Microsoft's Open Source Software Licensing Counsel advising Microsoft's product development teams on the use and development of OSS related products, and formulating OSS strategies and policies. Previously, he was Associate General Counsel for Extreme Networks, and Corporate Counsel for Adobe Systems.

Heather Meeker is shareholder at Greenberg Traurig, LLP, Co-Chair of the Open Source Committee of SciTech Section of ABA, and a member of the advisory panel on the ALI's project on the Law of Software Contracting. She provides open source counseling to clients in the United States and abroad.

Todd S. Parkhurst is a partner in the Intellectual Property Practice at Wildman, Harrold, Allen & Dixon LLP. He is experienced in litigation, transactions and counseling in patent, trademark, copyright, and computer law matters.

Thomas A. Smart, co-chair of Kaye Scholer LLP's Intellectual Property and Patent Litigation Practice Group, has litigated copyright, trademark, cybersquatting, false advertising, consumer fraud and unfair competition cases.