Intellectual Property Law 101: What every attorney should know

Charles R. Macedo | Amster Rothstein & Ebenstein LLP

A physicist by training, Charles uses his comprehensive patent experience to tackle the most important and complex developments affecting IP strategy today, including subject matter eligibility under 35 U.S.C. § 101, divided infringement under § 271, and navigating PTAB and PTO proceedings. He has been counseling on amicus briefs to the Supreme Court in the influential subject matter eligibility cases decided in the past few years, including Alice, Mayo, Myriad, and Bilski.

Mr. Macedo is considered an authority on IP issues and writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation. He is consistently at the forefront of complex and emerging patent issues in the financial services and transaction processing industries. Clients ranging from international banks, broker dealers and new business ventures call on Mr. Macedo to develop patent strategies, prepare patents, assert rights, and defend against infringement claims.

He holds bachelor’s and master’s degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. He was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit, 1989–1990. The recipient of the prestigious AIPLA Robert C. Watson Award, Mr. Macedo is included in Super Lawyers, IP Stars and Million Dollar Verdict. He also was a member of the Editorial Board for the American Intellectual Property Law Association Quarterly Journal and currently serves on the Editorial Board for Journal of Intellectual Property Law and Practice published by Oxford University Press.
Full biography at http://www.arelaw.com/professional/cmacedo/

Michael Graif | Mintz, Levin, Cohn, Ferris, Glovsky and Popeo

Mr. Graif is a partner at Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.  He focuses his practice on trademark and copyright enforcement, software, privacy, and social media.  He has represented clients from start-ups to Fortune 500 companies, advising them on strategic acquisitions, global licensing programs and protecting their IP rights.  He has also served as an expert on U.S. trade dress law in a multinational case in Australia.  Mr. Graif has appeared on TV and has been quoted extensively in the press and was ranked among the top trademark enforcement attorneys in New York by the World Trademark Review WTR 1000.

Craig Whitney | Frankfurt Kurnit Klein & Selz PC

Craig Whitney is a partner in the Litigation group, with a focus on intellectual property and false advertising disputes and counseling. Craig advises emerging, high-growth, and established companies across a diverse range of industries, including media, technology, publishing, apparel, pharmaceuticals, cosmetics, finance, art, entertainment and design. He handles copyright, trademark, right of publicity, false advertising, trade secret and patent issues, protecting valuable intellectual property rights from would-be infringers and defending clients against wrongful accusations of infringement. Craig also counsels clients on brand management and licensing. He oversees IP investigations and class action litigation defense. Craig prosecutes domestic and foreign trademark applications and actively assists clients in navigating the rapidly evolving landscape of IP law.  He is an experienced arbitrator and a member of the American Arbitration Association (AAA).

Craig’s representative work includes serving as lead trial counsel on a high-profile false advertising case between two telecommunication giants; multiple victories on behalf of video game developers fighting off copyright infringement claims by would-be competitors; a series of successful outcomes pursuing false advertising claims against product review websites, a landmark victory clarifying copyright fair use and parody on behalf of several well-known musicians; a defense win dismissing copyright infringement claims brought by a putative class of attorneys against the leading legal research websites; a favorable outcome for a high-end beauty products company in a trademark and trade dress action against a manufacturer of knock-of products; a district and appellate court decision dismissing all claims by a proposed class against an international bank for alleged violations of the Federal False Marking Act, RICO and the CAN-SPAM Act; and counseling prominent art museums and galleries on copyright issues.

Craig is the former Chair of the Copyright Law Committee and current Board member of the American Intellectual Property Law Association (AIPLA). He is a graduate of Cornell University (BS) and Harvard Law School (JD, cum laude). Following law school, he clerked for the Honorable Stephen V. Wilson in the United States District Court of the Central District of California. He is admitted to practice in New York and California.

Joshua Simmons | Kirkland & Ellis LLP

Joshua Simmons is a “well-established” and nationally recognized appellate and trial court litigator, who has been lauded as an “exceptional,” “forceful,” and “creative” “brainiac” (Chambers), “Top Attorney” (Law360), and “big-picture thought leader” (WTR). This “Intellectual Property Superhero” (CLS) focuses on copyright, patent, right of publicity, trademark, trade secret, and unfair competition litigations—particularly complex cases and those of first impression—along with contract, licensing, and domain name disputes. He also provides IP counseling; strategic portfolio management; as well as regulatory and legislative policy advice. His eye-catching litigations involve a range of media (film, news, publishing, social media, sports, television, theatre, and video games) and technologies (artificial intelligence, computer software and services, circuitry and semiconductors, Internet-based systems, medical devices, and telecommunications).

Josh routinely is recognized for his high-profile IP, media, entertainment, and technology representations.  He also is a frequent speaker and has authored numerous articles on emerging trends in intellectual property.  In addition, he is an active member of the intellectual property bar, chairing various copyright, social media, and software committees and task forces; serving as the Secretary for the ABA Intellectual Property Law Section, as well as a former member of its governing Council; and liaising to other organizations on copyright and right of publicity issues. He also is a member of the Board of Advisors to Columbia Law School’s Kernochan Center for Law, Media, and the Arts.

He received a J.D. from Columbia Law School, where he was awarded the Carroll G. Harper Prize for achievement in intellectual property, and a B.A. from Brandeis University.

Session I – What Every General Practice Lawyer Needs to Know About Intellectual Property but was Afraid to Ask | 12:00pm – 1:00pm
1. Introduction | 12:00pm – 12:15pm
2. Review of key kinds of intellectual property law | 12:15pm – 12:45pm

a. Copyrights
b. Trademarks
c. Patents
d. Business Torts
e. Trade Secrets
f. Contracts

3. Summary of how to determine which type of protection to seek | 12:45pm – 1:00pm

Break | 1:00pm – 1:10pm

Session II – Copyright Law 101 | 1:10pm – 2:10pm
1. What is copyright – what rights are protected? | 1:10pm 1:22pm
2. What is copyrightable – idea versus expression | 1:22pm – 1:34pm
3. Advantages of registration | 1:34pm – 1:46pm
4. Infringement | 1:46pm – 1:58pm
5. Fair use | 1:58pm – 2:10pm

Break | 2:10pm – 2:20pm

Session III – Are Embedded Images Copyright Infringement? | 2:20pm – 3:20pm
1. Background on the 9th Circuit’s “server rule” | 2:20pm – 2:30pm
2. Developments in embedding case law and social media | 2:30pm – 2:50pm
3. Recent cases calling “server rule” into question | 2:50pm – 3:10pm
4. Q&A | 3:10pm – 3:20pm

Break | 3:20pm – 3:30pm

Session IV – Trademarks Law | 3:30pm – 4:30pm
1. The basics of U.S. trademark law | 3:30pm – 3:50pm

a. What a trademark is and the different kinds of things that are protectable as a trademark
b. The purpose of trademarks and how they are used

2. The creation and maintenance of trademark rights in the U.S. | 3:50pm – 4:10pm

a. How and when trademark rights are created
b. Registered vs. unregistered trademarks — do you need a registration to use a trademark?
c. Registering a trademark with the United States Patent and Trademark Office and what should you consider before applying? how do you apply? what does the Trademark Office consider when reviewing your application?

3. The enforcement of trademark rights | 4:10pm – 4:30pm

a. What you can do about unauthorized uses of your trademark or use of a confusingly similar trademark — cease and desist letters, filing a lawsuit in federal court
b. What you can do if someone accuses you of infringing their trademark rights — defenses to trademark infringement
c. What damages are available to someone who’s rights have been infringed?
d. How long is the statute of limitations to bring a claim of trademark infringement?