Law Seminars International Presents

A Comprehensive Two-Day Conference on

Current Issues in Complex IP Licensing

Today's business and legal factors for licensing transactions

March 6 & 7, 2008
Wyndham Phoenix Hotel in Phoenix, AZ
Register      Download PDF Brochure

Who Should Attend

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

Why Attend

In developing this program, our goal was to provide licensing executives and attorneys with an opportunity to develop a more solid working knowledge of today's business and legal factors that must be addressed to achieve a mutually beneficial licensing arrangement. A multitude of legal issues can arise 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 issue. 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., Michael A. Lechter, Esq., and Raymond T. Nimmer, Esq.

What You Will Learn

Current themes and recent cases in complex licensing New developments in IP law with an impact on licensing Intersection of antitrust law and IP protection New markets for patents Royalty terms Terms and planning considerations for combined IP/IT deals Technology acquisitions and transactions involving open source software On-line licensing structures Payment systems IP licensing in China Developments in new media advertising Trademark licensing and copyrights on the internet Anatomy of a complex license

Agenda

Thursday, March 06, 2008

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
  Michael A. Lechter, Esq., Program Co-Chair
Squire, Sanders & Dempsey L.L.P. / Phoenix, AZ
  Raymond T. Nimmer, Esq., Program Co-Chair
University of Houston Law Center / Houston, TX
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
University of Houston Law Center / Houston, TX
10:30 am Break
10:45 am Substantive law (con't): Major Recent Patent Cases and Their Impact on Licensing Strategies
  The fallout after Medimmune v. Genentech and other cases on standing to sue; AT&T v. Microsoft on damages recovery; and KSR v. Teleflex on obviousness
  Michael A. Lechter, Esq., Program Co-Chair
Squire, Sanders & Dempsey L.L.P. / Phoenix, AZ
11:15 am 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
  Brett L. Dunkelman, Esq.
Osborn Maledon P.A. / Phoenix, AZ
12:15 pm Lunch (on your own)
1:30 pm The Making of New Markets for Patents
  Private auction; public auction; online exchange; acquisition of IP as a driver in M&A transactions; selecting the transaction structure that will maximize the contribution to the bottom line
  Michael J. Lasinski, Managing Director
Ocean Tomo, LLC / Chicago, IL
2:15 pm Optimizing Royalty Terms; Audits and Alternative Structures
  Designing running royalties and allocating market risk to fit commercial objectives; avoiding problematic licensing provisions; tips for effective implementation to ensure full receipt of revenues
  Peter J. Kinsella, Esq.
Faegre & Benson LLP / Denver, CO
3:00 pm Break
3:15 pm IP Licensing in China
  Enforceability of "standard" U.S. licensing terms in China; impact of China's new Anti-Monopoly law on IP licensing; negotiating IP licenses with Chinese companies
  Jonathan M. James, Esq.
Perkins Coie LLP / Phoenix, AZ
3:45 pm Technology Acquisitions and Transactions Involving Open Source Software
  Integrating open source into proprietary software; licensing out; licenses with patent triggers; preparing for joint ventures and M&A transactions; effective compliance programs; open technology standards efforts
  Raymond T. Nimmer, Esq., Program Co-Chair, Moderator
University of Houston Law Center / Houston, TX
  Frank X. Curci, Esq.
Jennings, Strouss & Salmon, PLC / Scottsdale, AZ
  Douglas E. Phillips, Esq., Vice President & General Counsel
Promontory Interfinancial Network, LLC / Arlington, VA
5:00 pm Reception for Faculty and Attendees
  Sponsored by Andrews Kurth LLP and Squire, Sanders & Dempsey LLP

Friday, March 07, 2008

8:00 am Registration and Continental Breakfast
8:30 am Introduction & Overview
  Jeff C. Dodd, Esq., Program Co-Chair
Andrews Kurth LLP / Houston, TX
  Michael A. Lechter, Esq., Program Co-Chair
Squire, Sanders & Dempsey L.L.P. / Phoenix, AZ
  Raymond T. Nimmer, Esq., Program Co-Chair
University of Houston Law Center / Houston, TX
8:45 am 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
9:30 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.
Kirkpatrick & Lockhart Preston Gates Ellis LLP / Seattle, WA
10:15 am Break
10:30 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
11:15 am 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?
  David E. Rogers, Esq.
Squire, Sanders & Dempsey L.L.P. / Phoenix, AZ
12:00 pm Lunch (on your own)
1:15 pm 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.
Gray Matter LLC / Newport Beach, CA
  William Josey
TOKYOPOP Inc. / Los Angeles, CA
2:00 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
  Lorin Brennan, Esq.
Gray Matter LLC / Newport Beach, CA
  Holly K. Towle, Esq.
Kirkpatrick & Lockhart Preston Gates Ellis LLP / Seattle, WA
3:15 pm Break
3:30 pm Legal Ethics in a Digital Age
  A walk through potential ethical problems of particular relevance for licensing attorneys
  Lawrence J. Siskind, Esq.
Harvey Siskind LLP / San Francisco, CA
4:30 pm Evaluations and Adjourn

Tuition

Regular tuition for this program is $995 with a group rate of $895 each for two or more registrants from the same firm. For government employees, we offer a special rate of $795. For students and people in their job for less than a year, our rate is $497.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Cancellation & Substitution

You may substitute another person at any time. We will refund tuition, less a $50 cancellation fee, if we receive your cancellation by 5:00 p.m. on Friday, February 29, 2008. After that time, we will credit your tuition toward attendance at another program or the purchase of a Homestudy. There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders.

Continuing Education Credits

This program qualifies for 12.5 AZ CLE credits including 1 ethics. Upon request, we will apply for CLE credits in other states and other types of credits.

Location

The conference will be held at the Wyndham Phoenix Hotel at 50 East Adams Street in Phoenix, AZ 85004. Call the hotel directly at (602) 333-0000 for reservations. Rooms are on a first come, first served basis.
More about the Location

If You Cannot Attend

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, is partner at Andrews Kurth LLP, and focuses on nternational intellectual property and information transactions, intellectual property commercialization strategies and registering, enforcing and licensing IP rights. He co-authored "Modern Licensing Law" and is listed in Texas Monthly as a "Texas Super Lawyer".

Michael A. Lechter, Program Co-Chair, is of counsel at Squire, Sanders & Dempsey L.L.P. and focuses on obtaining and maintaining intellectual property rights, negotiating and drafting technology and IP-related agreements and enforcing rights. He is founder and chair of the Licensing Executives Society's Arizona Section and author of The Intellectual Property Handbook.

Raymond T. Nimmer, Program Co-Chair, is Dean and the Leonard H. Childs Professor of Law at the University of Houston Law Center and also Co-Director of the Houston IP and Information Law Institute. He co-authored "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".

Lorin Brennan is principal in Gray Matter LLC, which he co-founded in 1999. The firm develops automated contracting and rights management software for intellectual property licensing. He specializes in international intellectual property licensing.

Frank X. Curci, parter in the Intellectual Property, Technology and Biotechnology Practice Groups at Jennings, Strouss & Salmon, PLC, focuses on domestic and international intellectual property and technology matters. He is an Adjunct Professor of High Technology Licensing at the Sandra Day O'Connor School of Law at Arizona State University.

Brett Dunkelman, member at Osborn Maledon P.A., focuses on intellectual property and antitrust/trade regulation law. He is listed in The Best Lawyers in America and Chambers USA.

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

Jonathan M. James, partner with Perkins Coie LLP, focuses on patent, intellectual property and commercial litigation matters for technology companies including intellectual property litigation and licensing matters in China. He is listed in The Best Lawyers in America and in Southwest Super Lawyers.

Peter J. Kinsella, chair of the Intellectual Property Transaction Practice at Faegre & Benson LLP, focuses on patent, trademark and litigation matters and advises on IP and technology-related commercial transactions. He is listed in Corporate Counsel Black Book, The Best Lawyers in America and Chambers USA.

Michael J. Lasinski, Managing Director at Ocean Tomo, LLC, is in charge of the valuation practice area regarding strategy, valuation and tax structure analysis. He is Treasurer and former co-chair of the Valuation and Taxation Committee of the Licensing Executives Society and Vice Chair of the Valuation and Taxation Committee of the Intellectual Property Owners Organization.
Full bio and contact info for Michael J. Lasinski at Ocean Tomo, LLC

Douglas E. Phillips, Vice President and General Counsel of Promontory Interfinancial Network, provides technology-based solutions for financial institutions. Previously he practiced law at Covington & Burling LLP and was President of Business Software Alliance.

David E. Rogers, partner in Squire, Sanders & Dempsey L.L.P.'s Intellectual Property Group, focuses on patent, trademark, trade dress and unfair competition law, including prosecution, licensing and disputes such as USPTO oppositions and cancellations, Internet domain name disputes and litigation.

Lawrence J. Siskind, partner with Harvey Siskind LLP, focuses on litigation, registration and transactional advice on domestic and international copyrights, trademarks, trade secrets and unfair competition. Previously he was the first Special Counsel for Immigration Related Unfair Employment Practices and was on California Governor Wilson's Advisory Council on Electronic Commerce.

Thomas A. Smart, Chair of Kaye Scholer LLP's Trademark, Copyright and False Advertising Group, has litigated copyright, trademark, cybersquatting, false advertising, consumer fraud and unfair competition cases.

Holly K. Towle, partner at Kirkpatrick & Lockhart Preston Gates Ellis LLP, focuses on technology, intellectual property and electronics in commerce. She is the author of "The Law of Electronic Commercial Transactions" and is included in "Guide to the World's Leading Technology, Media & Telecommunications Lawyers", "An International Who's Who Of E-Commerce Lawyers" and "The Best Lawyers in America."

Firm Links

Ocean Tomo, LLC