Meet Mark Cramer Our New Copyright Subcommittee Vice Chair!

Mark Cramer, a member of William & Mary Law School's Class of 2016, joins the Copyright subcommittee with a love for all things IP – especially those springing from the ongoing evolution of information technology.
He entered law school after three years of employment at a leading defense contractor, where he worked as a proposal writer, proposal manager, and general corporate asset. Prior to that, Mark received his Bachelor of Arts in History and Political Science from The Johns Hopkins University. As an undergrad, he focused his energies and studies on better understanding the intersection of politics, international trade, and intellectual property, with a special interest in protective designations of origin and geographical indications on food products.
At William & Mary, Mark serves as Vice President for Career Outreach and Alumni Relations in the Student Intellectual Property Society (SIPS), helping both to connect current students with practicing IP attorneys and to keep alumni closely involved in the W&M IP community. He also currently serves as the Deputy Chief Justice of the William & Mary Law School Honor Council.
As Vice Chair of the Copyright Subcommittee, Mark looks forward to working with law students and professionals alike to spread information about new research, writing, and job opportunities in the world of intellectual property law. In his free time, he can be found playing squash and basketball, cycling, and playing music with friends.
Connect with Mark on LinkedIn

#IPLSpring Copyright and Social Media Committee

The Copyright and Social Media Committee works with issues relating to the use and sharing of copyrightable material online through social media platforms. This gets into topics such as the role of user-generated content in online promotion, rights management and licensing, and proposals that improve the ability of attorneys to address these new issues as they develop.

The April 2nd Committee Meeting at the ABA-IPL Conference was led by Vice Chair Hannah Poteat. The meeting kicked off by first discussing the success of that morning’s Lions, Tigers, and Friends: Social Media Roundup panel, which was so popular that it was standing room only. The rest of the meeting comprised an overview of fair use cases with implications for social media in the future, including Google Books, Cariou v. Prince, and a recent dispute over a photograph of a Color Run participant used in a national ad campaign without the approval of its creator.

Check out this Committee’s ABA Page!

Committee Leadership:

Chair Joshua Simmons
Vice-Chair Hannah Poteat (@NSQE)

Copyrightability (Chair Hannah Poteat @NSQE)
Fair Use (Co-Chairs Jennifer Criss and Mickey Osterreicher)
Policy (Chair Alyssa Reiner)
Privacy (Chair Ganka Hadjipetrova @GankaH)
Terms of Use (Chair Francine Ward).

Information compiled by Rachael Dickson (@LegallySparkly)

#IPLSpring #Recap: Diversity Action Group Meeting

By Michal-Ane McIntosh

On April 3, the Diversity Action Group had their monthly meeting during IPL Spring. The Group, chaired by Kris Davis, is very active in its efforts to promote diversity in the Intellectual Property Law Section and in the profession.

During IPL Spring, DAG hosted an LGBT Diversity Reception (sponsored by Finnegan Henderson) that attracted over 125 attendees and was a resounding success. Several of its members participated in the Conference Connections program, which paired first-time conference attendees with veteran attendees. That program was also a success and will be expanded for future conferences.

Nick Kim will be the 2014-2015 DAG Chair. Shane Vannatta has been appointed to serve as ABA-IPL Liaison to ABA Commission on Sexual Orientation and Gender Identity.

DAG’s next meeting is scheduled for Tuesday, May 6, 2014, at 4:00 p.m. EST (3:00 p.m. CT).  You can join the meeting by calling 866-646-6488 and using the conference code 3219885607.

IPLSpring CLE Review: Anatomy of an International Trademark License Agreement

Reporting and Photography by Anna J. Oakes

At the 29th Annual Intellectual Property Law Conference attorneys from around the world came together to take advantage of the excellent international panel “Anatomy of an International Trademark License Agreement.” During the program, speakers from multi-national jurisdictions discussed different aspects of international trademark license agreements involving basic licensing considerations with a worldwide twist and different types of parties.

Tricia Thomkins, Chief Intellectual Property & Licensing Counsel at Perry Ellis International, Inc. in Miami, Florida, moderated the program. Additional program speakers included: Matthias Berger of Field Fisher Waterhouse in Hamburg, Germany (find his presentation here), Toni Hickey, Senior Counsel at Cummins, Inc. in Indianapolis, Indiana, Michelle Cooke, Intellectual Property Partner at Steptoe & Johnson LLP in Los Angeles, California, and Mariano Municoy, Head of Trademarks and Intellectual Property at Moeller IP Advisors in Buenos Aires, Argentina (find his presentation here).


Throughout the discussion, Thompkins posed questions relating to issues that practitioners face when drafting and enforcing trademark license agreements with international entities. Several of the panelists spoke on the issues surrounding the scope of granting rights when writing a trademark license.  Cooke stressed the need to consider if the trademarks are common law or registered marks, especially if your client intends to expand to new territories. Municoy weighed in on the importance of this in Latin America, where  unregistered trademarks are of little value since rights are acquired through “first to file.” In addition to expansion to new territories, Hickey stressed the importance of specifying what distributors cannot do in the license. As a licensor, you do not want broad marketing rights granted in a license.

Each of the panelists touched on the issue of quality controls and the effects of naked licenses in different territories. Naked licenses are not allowed in the United States but are allowed in other parts of the world like Latin America and the European Union. Municoy discussed this important distinction between Latin America and the United States, explaining that while naked licenses are allowed, strong consumer protection laws promote quality control and warn of the dangers of naked licenses to consumers. Berger added that although naked licenses are allowed in the EU, you should never grant one because the licensor needs to protect the value of its mark and reputation.


Some other great tips that were given by the various panelists:

Cooke: When limiting indemnification obligations, remember that you may be giving your licensee the right to control litigation. Consider being able to modify the territory should a risk become known.

Hickey: Don’t neglect to review boilerplate provisions in a trademark license agreement. Know your geographic market.

Municoy: Avoid doing any act that would be considered collusion with competitors in your license.

Hickey: In-house attorneys should work closely with the trade department to avoid anti-trust issues in trademark licensing.

Municoy: License agreements can be registered with trademark offices in some countries, gaining effect against third parties.

Berger: While registering trademark licenses could benefit licensees, it could also cause legal issues down the road with future agreements.

Cooke: Some considerations when drafting for possibly new intellectual property – you need to know who the user will be, how the new IP will be used, and who will own the new IP afterwards.

Hickey: We don’t make a territory distinction in quality control, but rather between manufacturers and distributors, adding different rights for the different types of quality control needed from each licensee.

The “Anatomy of an International Trademark License Agreement” CLE program was covered by the following Law Student Reporters: Anna Oakes, a third-year law student at the University of New Hampshire School of Law (formerly Franklin Pierce Law Center) in Concord, New Hampshire, and Janinda Gunawardene, a third-year law student at Southwestern Law School in Los Angeles, California. 

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

IPLSpring CLE Review: Shutting Down Rogue Websites: International & Domestic Solutions

Reporting and Photography by Anna J. Oakes

At the 29th Annual Intellectual Property Law Spring Conference panelists from around the world exchanged information on country and regional perspectives regarding the growing problems in on-line counterfeiting and piracy during the CLE program “Shutting Down Rogue Websites: International & Domestic Solutions.”

Christine Farley, Professor of Law at the American University Washington College of Law in Washington, D.C., moderated the program. Additional program speakers included: Joe Cohen, Partner at Collyer Bristow LLP in London, United Kingdom, Christina Frangiosa, Attorney at Semanoff Ormsby Greenberg & Torchia, LLC in Huntingdon Valley, Pennsylvania, Michele Ferrante, Founder and Managing Partner at Ferrante Intellectual Property in Shanghai, China, and Wilfredo Fernandez, Attorney at Zacarias & Fernandez in Asuncion, Paraguay.


What do you think a rogue website is? That’s a question that has been making enforcement tough for many IPR holders around the world. Cohen pointed out that there is no legal definition for “rogue website” in the EU, but he believes a good definition would look like this: “An on-line marketplace, set up solely for the purpose of selling counterfeit and/or pirated goods.”

Frangiosa  noted that there isn’t a legal definition in the United States, but the IPL Section proposed creating an entirely new term: Predatory Foreign Websites (PFWs). This  term refers to the following: “While the conduct itself may be identical to that prohibited under existing law, it is not readily subject to adjudication in the U.S. because the website is either beyond the jurisdiction of U.S. enforcement authorities entirely or, even if technically subject to such jurisdiction, is beyond the reach of such authorities to effectively enforce a judgment against it.” Frangiosa summed this term up in simpler terms as “foreign-originated sites engaged in large-scale piracy of U.S. copyrights or counterfeiting of U.S. trademarks.” She described the problem of these rogue websites as a game of “whack-a-mole” for IP owners.


Attorneys from around the world agree that rogue websites are an issue and that changes in legislation need to be made to protect IPR owners. These panelists are at the forefront of this push for change and have taken steps to aid in new proposals. Check out the IPL Section White Paper.  

The “Shutting Down Rogue Websites: International & Domestic Solutions” CLE program was covered by the following Law Student Reporters: Anna Oakes, a third-year law student at the University of New Hampshire School of Law (formerly Franklin Pierce Law Center) in Concord, New Hampshire and Sean Cooper, a second-year law student at Widener University School of Law – Harrisburg in Harrisburg, Pennsylvania.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

#CLE Review: Refocusing the Damages Analysis in Patent Suits: New Techniques & ADR Options for Litigants & Damage Experts

By: Matthew Zuziak

New and more efficient methods of ADR and assessing damages was the hot topic at this panel at the 29th Annual ABA Intellectual Property Law Section Spring Conference.  Panelist and Chief Judge of the Federal Circuit, Judge Randall Rader, participated in a lively discussion with Judge Thomas S. Ellis III, Senior District Judge for the United States District Court for the Eastern District of Virginia.  The two judges were joined by damages expert Carol Ludington, of Ludington Ltd.Bruce Burton, Managing Director in the Dispute Advisory & Forensic Services Group at Stout Risius Ross (SRR), and David L. Newman, a Partner at Arnstein & Lehr.  


The program started out with an overview and flaws that are inherent to the current methods of damages analyses.  Judge Rader commanded the attention of the audience by questioning why damages analyses cannot be as easy as a realtor assessing the value of a house.  This is, mainly due to the confidential nature of patent license agreements.  Rader believes this information should be widely available in some form of an easy to access database.

While the panel agreed it was an innovative suggestion, the probability of such a database being created in the near future is not likely due to the logistical issues and consistency (or lack there of) across the district courts in handling damages in such cases. 

Another main topic of conversation was the current practice of calculating reasonable royalties based on the 15 so-called Georgia-Pacific factors.  While skeptical of their applicability, Rader further lambasted the factors stating: "The Georgia-Pacific factors have been abused to the extent that I’m really tempted to say they are no longer available … they’re a laundry list of sources to be consulted when making an analysis, not the analysis itself."  Ludington and other panelists responded by stating the GP factors are an important consideration and every damages expert must take them into account in performing such calculations.  Given the innovative suggestions provided at this panel, it will be interesting to see how courts address damages analyses in future patent disputes. 

For a thorough overview and materials from the CLE presentation, check out the official ABA website recapping presentations here


Law Student Reporters with Chief Judge Rader! @stacypyae 

#IPLSpring Review: Trademark Litigation Committee Meeting

By: Janinda Gunawardene


Last Friday, I attended the Trademark Litigation Committee Meeting. The Meeting was led by Chair Rick Biagi, who was joined by Vice Chairs Christina Frangiosa and Naresh Kilaru. The Trademark Litigation Committee Meeting focuses on practice in the state and federal trial courts in cases involving trademarks, trade dress, trade identity and related unfair competition claims, proposals for improvements in such practice, including decreasing costs and length of pendency of lawsuits.

Mr. Biagi discussed an upcoming project aimed at enabling Committee Members to be apprised of the most recent developments of trademark law and practice. This project will consist of short summaries of key U.S. trademark decisions by circuit. Participants would e-mail fellow Committee Members with short summaries featuring the facts, issue, holding, and reasoning. This project would especially be a great opportunity for law student members to keep current with the latest developments in trademark law as well as make connections with fellow Committee Members passionate about trademark law. Join the Trademark Litigation Committee Meeting today to get in on all the action!

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

Image Credit: DanCooperLaw

#CLE Recap: Are the Trolls Really Out of Control? Reflections on Recent Efforts to Limit “Abusive Patent Litigation”

By Stacy Yae (@stacypyae)

Are “trolls” creating real problems with widespread demand letters to small businesses? With NPE patent assertions? With all patent assertions generally?

These were a few questions that opened up the highly anticipated panel presentation on Friday, April 4. Brian Carroll, General Counsel at LevelUP (SCVNGR, Inc.), a Boston-based company revolutionizing mobile payments, moderated the event. Program speakers included high-profile individuals: Attorney General William Sorrell, Vermont, Suzanne Michel, Senior IP Counsel at Google, Phyllis Turner-Brim, Chief IP Counsel at Intellectual Ventures, Rich Rainey, IP Counsel at GE, and Dean Watson, IP Counsel at Dura Automotive

Discussion extended beyond these opening questions, delving into the more complex issue of how the present patent enforcement system enables and encourages “patent trolling.”

One particular key factor that encourages “patent trolling” is the proliferation of patents with vague, obvious, and overbroad claims. Rich Rainey spoke to this issue, saying that our patent enforcement system needs to adopt stricter specificity requirements to prevent clutter in the federal dockets.

What’s your take on the “patent trolling” phenomenon? Join the conversation on Twitter with the hashtag #IPLSpring. Whether the post-grant provisions of the AIA will contribute to reducing poor-quality patent litigation will remain to be seen.

If you didn’t attend the 29th Annual Intellectual Property Law Conference, you can catch up on all that you missed by reviewing the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who covered all the Conference events on Twitter. You do not have to sign up for Twitter to follow the Law Student reporters. Just visit this link.

#IPLSpring Copyright Policy Committee

By Phillip Turner

Inside the McLean Room on the Second Floor last Thursday April 3rd at 10:00 AM was an informal meet and greet of the Copyright Policy Committee (CPC).  The CPC is in the Copyright Division of the ABA’s Section of Intellectual Property Law.

The informal-style meet and greet was led by CPC’s Vice-Chair, Walt Lehmann of Lehmann Strobel PC (Baltimore, MD).  One of CPC’s topics included comments on “orphan works.”  Orphan works are those still under copyright but whose owner cannot be identified or located.  Since the meeting was one of getting acquainted there were no official decisions relating to discussion topics made on Thursday.  Other general topics included the CPC’s future involvement with politicians in an advisory role and the recent and increasingly quick rise of administrative employees at American universities.

If you are not entirely familiar with the CPC, their webpage  includes more information and the option to join their email subscription.  Once you sign-up for the email subscription, you will be emailed updates of the CPC including meeting/conference call info.  If you like what you see and hear (and I’m sure you will!) you can sign up to become a voting member.  This is limited to lawyer members, so students will need to wait.  Student ABA members can still become general members of the CPC.

I enjoyed meeting other members, as well as listening and discussing CPC topics of the day, and look forward to future participation.

Here are some upcoming CPC Programs, Meetings and Events:

Learning the Lessons of Significant Recent Cases in Digital Media and Publishing

April 10, 2014

Location: N/A

Format: Webinar/Teleconference

Protecting Product Designs Through Overlapping IP

April 15, 2014

Location: N/A

Format: Webinar/Teleconference

The Economics of Hot Antitrust-IP Issues

April 18, 2014

Charles River Associates

Washington, DC

Format: Live/In-Person

The CPC meeting was covered by the following Law Student Reporter: Phillip Turner (@phillip__turner) of Belmont University College of Law.

f you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

#IPLSpring CLE Review: Ethics: Tough Calls: Exploring Gray Areas in Withholding Documents from Production Pursuant to the Attorney Client Privilege or Work Product Doctrine

By: Janinda Gunawardene


Last Friday, Sarah Guske of Cooley LLP moderated a panel discussing the ethical issues associated with withholding documents from production while showcasing the limits between professional conduct and privilege laws. Ms. Guske led the panel consisting of Honorable Francis Allegra of the U.S. District Court for the District of Columbia, Claire Hass of Google, and e-discovery counsel of Redgrave LLP. The panel highlighted the complexities presented by new technologies during discovery of information that was traditionally maintained on paper records only.

The presentation opened up with a discussion of cloud computing and how current laws do not directly address the reach of discovery requests for critical information stored on virtual devices. Hon. Allegra, the author of the recently released "Plugged In: Guidebook to Software and the Law," emphasized the risk of storing private, privileged, or confidential information being made available for both a cloud customer and the customer’s client. You may read an excerpt from Hon. Allegra’s book here. One such inherent risk is the how a cloud provider may backup data or how long this data is kept after a cloud customer deletes this data. Hon. Allegra urged attorneys to familiarize themselves with the internal policies regarding the backup and deletion procedures and not assume every cloud computing provider has the same privacy and security policies. As a partner Ms. Guske echoed this sentiment and explained how such concerns played out as a software and electronics patent litigator.

Hon. Allegra then discussed the importance of the Rule 16 pretrial conference and advised counsel to identify specific issues in the case, the general, scientific principles, and the kinds of evidence likely to be offered by the parties on the issues. As an in-house attorney, Ms. Hass spoke about the merits of drafting a broad 502(d) claw back agreement, which protects against the waiver of privilege or other protections upon the disclosure of protected information in discovery. The panel also brought up the use of privilege logs during the discovery process. Ms. Hass noted the increasing practice of the categorical over the itemized format of privilege logs. The presentation ended with a question from the audience discussing the spoliation of evidence and the basis of issuing sanctions under Federal Rule 37.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

Image Credit: Janinda Gunawardene

#CLE Recap: Better, Faster, Cheaper: Patents Issued in about One Year for Less Cost

By Stacy Yae (@stacypyae)

How long does it take to push a patent application through the U.S. Patent and Trademark Office (USPTO)?

The common perception is that this is a long, costly, and tedious process. But there are tactics to get your patents issued within six months.

At this packed event on Wednesday, April 2, experienced panelists shared their tactics for getting patents issued within less than one year and at low costs. Kate Gaudry from Kilpatrick Townsend & Stockton moderated the event. Panelists included: Thomas Franklin, Kilpatrick Townsend & Stockton, Angel Lezak, Former Examiner at the USPTO, Timothy K. Wilson, SAS Institute Inc., and Dion Messer, Limelight Networks, Inc.

Prioritized Examination and the First Action Interview Program are two avenues that can speed up applications through the USPTO. Angel suggested that patent prosecutors can never go wrong with a First Action Interview, the takeaway being to help the examiner help you.

Examiners look at numerous patent applications every day. When an examiner can put a face to an application or have an applicant explain the application in person, the advantage is more than circumstantial.

What are your opinions on frequent interviews and interaction with the USPTO to speed up your patent application? Join the conversation on Twitter with the hashtag #IPLSpring.

If you didn’t attend the 29th Annual Intellectual Property Law Conference, you can catch up on all that you missed by reviewing the tweets and blog entries of the ABA-IPL’s Law Student Reporters, who covered all the Conference events on Twitter. You do not have to sign up for Twitter to follow the Law Student reporters. Just visit this link.

#CLE Review: Characters and the Law

By Phillip Turner

Great Cesar’s Ghost Batman!…Your Batmobile can be protected under copyright law.  I learned many new things including the need to protect characters is a good thing. As speaker and VP of noted, “If no one is infringing our characters, then no one is caring about our characters.”  Well said.  

Thursday Afternoon’s CLE prevented the usual after-lunch nap with a series of great, entertaining presentations that covered all aspects of “Characters and the Law.”  To recap, here were the moderator and speakers:

David Postolski, Day Pitney LLP, Parsippany, NJ

Thomas Crowell, Lane Sash & Larrabee LLP, White Plains, NY
Jay Kogan, DC Entertainment, New York, NY
Cydney Tune, Pillsbury Winthrop Shaw Pittman LLP, San Francisco, CA

The packed crowd was enthusiastic and attentive throughout the CLE.  On Twitter there were lively commentary from audience members. 

If we weren’t awake before this panel, we are now! Scream noise played with Frankenstein images; tv themes, etc.

OMG Jay Kogan talking about recent Conan Doyle lawsuit argument, greatly discussed in my Note, I’m geeking out so hard right now

Jay Kogan on characters & law: Do any law schools offer Family Guy & the Law yet?

Cyndy Tune - Grant of rights in characters must include terms on distribution channels, territories, platforms

Consider giving approval rights to bare bones screenplay as a way to appease subject of bio

 The best resource I found for a detailed re-account of the cases highlighted during the CLE is Legal Protection Available to Characters and Character Licensing Objectives.  Cyndey Tune added a great perspective on protection of your characters to prevent unwanted uses (e.g. children characters in adult movies) as well as using contracts as a protection tool.  Thomas Crowell delivered a great presentation concentrating on real-life people as characters.  I think reality TV stars may be characters before they sign the contracts, but Thomas informed us that clients need to read over all the provisions of the contracts.  Some shows may want to “embarrass” people on purpose. 

It was also a pleasure and delight to have David Postolski as moderator.  Check out his interview with me to learn more about David.  Overall, Characters and the Law was a nice escape, but superbly informative and extremely relevant.  I look forward to the next great character - real or fictional - that will fight for their copyright.

The Characters and the Law CLE was covered by Phillip Turner, a first-year law student at Belmont University College of Law in Nashville, Tennessee.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters.

ABA-IPL USPTO Trademark Ex Parte & Inter Partes Joint Committees

By Sean Cooper

Last week, I joined the United States Patent and Trademark Office (USPTO) Trademark Ex Parte and Inter partes committees at their joint committee meeting at 29th Annual ABA Intellectual Property Law Section Spring Conference. Chair of the Ex parte committee, Francine D. Ward (@Francineward) of the Law Offices of Francine D. Ward,  and Chair of the Inter partes committee, Erik Pelton (@tm4smallbiz) of Erik M. Pelton & Associates, were both kind enough to let me sit in on the joint meeting.  Both committees are very active and have been instrumental in furthering the presence of Trademark attorneys within the Section of Intellectual Property Law.

The Ex parte committee covers practice before the USPTO “with respect to the preparation, filing, and prosecution of trademark applications, the registration of trademarks, and other ex parte trademark matters not within the scope of other committees.” Some of those matters include the administration of trademark examination of the USPTO and ex parte appeals to the Trademark Trial and Appeal board (TTAB). Similarly, the Inter partes committee covers various aspects of inter-parties proceedings before the USPTO TTAB, “including the administration of the Board and its fees and services,” and issues relating to the TTAB Manual of Procedure and the Trademark Rules of Practice.

At the meeting, both committees discussed their recent actions and policy initiatives as well as a few upcoming events. One of those events is the “ABA-IPL Trademark Day: Behind the Scenes at the USPTO” on September 18, 2014. “The program will feature presentations from Trademark Office officials on topics such as electronic application filings, USPTO website tools, TTAB filings and procedures, and more, as well as a live TTAB hearing in the afternoon.“ More information on this and other committee events are available to members of these committees.

Follow these links to view each committee’s web page and learn more about the Ex parte and Inter-parties committees:

The USPTO Trademark  Ex Parte & Inter Partes joint meeting was covered by the following Law Student Reporters:  Sean Cooper (@CoopsIPLawBlog) from Widener University School of Law - Harrisburg and Phillip Turner (@phillip__turner) from Belmont University College of Law.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

#CLE Review: Non-traditional Trademarks and the Entertainment & Sports Industries

By Phillip Turner

From Europe to North America there is no shortage of non-traditional trademarks, or is it trade marks or trade-marks!?!  Any way your country spells it, one thing is for sure…the Friday morning crowd at Non-Traditional Trademarks was fully engaged, informed, and entertained.  Here are just a few Tweets during the CLE:

“Who dat? Who dat? Who dat?” Is it protectable?

Douglas Rettew: Sheet music without a sound clip found insufficient as a specimen of use for a sound mark!

Smell of fresh cut grass - Distinctive tennis balls bounce - Olfactory mark

I attribute the great participation to the moderator and speakers of the CLE.  To recap, we were blessed to have four great presenters:

Leonard Glickman, Cassels Brock & Blackwell LLP (Toronto, Canada)
Anastasia Danias, National Football League (New York, NY)
Manuela Macchi, Keltie LLP (London, United Kingdom)
Douglas (Chip) Rettew, Finnegan, Henderson, Farabow, Garrett & Dunner LLP (Washington, DC)

Manuela Macchi spoke on “the strong smell of dark beer” as an olfactory trade mark and other “bizarre examples” from the EU.  When I asked how did IP became part of her professional career? Manuela said she “Took the IP module at University, then when I was a trainee, I assisted a senior lawyer in a large commercial deal that involved IP and became more interested. The rest is history, as they say.”  I continued to inquire about her favorite (or favourite) IP case, and she replied “There is not one case in particular. I think the most exciting thing about my job is talking to creative and business people, helping them protect their IP from the start and then seeing the brands on the market and feeling I have had a little part in it.”  As a student it is nice to know that attorneys still have a passion for their work and clients.  Plus, when I asked if she liked cars or trucks more, Manuela replied with “Motorbike”…what’s not to like!

Len Glickman opened the CLE with a great Audio/Visual Presentation Friday morning.  I think the coffee I brought with me was not needed because the speakers did such a great job of keeping everyone’s interest peaked.  Maybe Len’s sense of humor with answering my questions translated into a great CLE experience.  When asked what is one thing you want everyone to take away from your part of the CLE? Len said “That Toronto and Canada have more to offer than Rob Ford and Justin Bieber headlines.”  I agree…they have Len Glickman!  However, I could tell from his dedication to IP that there is something that Len may want to help change or influence.  He told me that he would “Change copyright law in Canada to make it more creator-friendly.” 

Though I did not catch-up with Douglas (Chip) Rettew or Anastasia Danias, I do know that they share the same passion for non-traditional trademarks by the excellent presentations they gave an eager audience in a packed hotel salon Friday morning in Arlington, VA.  Check out a couple of the presentations from the CLE:

The Non-Traditional Trademarks and the Entertainment & Sports Industries CLE was covered by Phillip Turner, a first-year law student at Belmont University College of Law in Nashville, Tennessee.

If you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

8 Reasons to Tweet, with Examples from #IPLSpring

By Law Student Reporter Rachael Dickson (@LegallySparkly

This week at the ABA-IPL Conference, 11 Law Student Reporters live-tweeted a variety of panels on patent, trademark, copyright, social media, and ethics. Many attendees followed along and become involved in discussions with the LSRs on twitter as well.

Why? What is this Twitter thing? What exactly can it do for you? I’ll be using examples from Twitter during various panels during the conference to illustrate what live-tweeting is and why it can be so valuable to you.

1. You can get involved in intellectual discussions about the topic at hand.

During the Fair Use Panel on Friday, San Francisco lawyer Hannah Poteat tweeted out a link with some background information about artist Richard Prince (of Prince v. Cariou). I teased her about it, which actually led to an interesting conversation about different artists’ purposes.


That one conversation ended up turning into a question for the panel. Twitter affecting real life.


2. You can gain more background information on the discussion at hand.

LSAG Communications Subcommittee Chair Franklin Graves (@FranklinGraves), a 3L at Belmont, tweeted out some extra information about a modern case relating to Fair Use.


When the Fair Use Panelists got so passionate about a current case that they forgot to mention the name of a case, the local LSRs got help from a friend.


3. You can benefit from the experience of others.


I hadn’t heard of the Righthaven cases before Hannah mentioned them on twitter. I’ve looked them up now and she’s totally right, these were big Fair Use victories that are incredibly valuable to the discussion. I may have never heard of them without her experience

4. Sometimes you can interact with the panelists themselves, while they’re on stage.

Some of the panelists had a lot of fun getting into the social media side of the conference.


Other conversations with panelists during their own panels got into more serious discussions. For example, here’s an exchange between a panelist and I during the First Amendment and Social Media discussion of the Lions, Tigers, and Friends: Social Media Roundup Panel on the first day. Perry Sofferman had just started discussing state legislative efforts to restrict or ban sex offenders from social media. imageimage

5. Sometimes things can get silly and fun.

Such as when haikus are written in tribute to panels.


Inspired by Paul’s beautiful poetry and the Fair Use Panel discussion of Bridgeport Music, Inc. v. UMG, Inc., et al., I tried my own hand at haiku writing.



Occasionally you can find some rather odd alliterative entertainment.




6. Also, selfies.



7. It’s a great way to network.

At one point during the conference, I gathered up my courage and walked up to the well known Internet Lawyer Joe Gratz (@DreamWord), who spoke on the Fair Use Panel. I was extremely pleased when he actually recognized me from my photo on Twitter. He has since used Twitter to suggest I connect with a fellow internet law loving friend of his in Chicago.
As another great example of twitter-assisted networking, Paul Donovan of Canada has been tweeting at @braunovan for several ABA-IPL conferences now. His tweets are so prolific that his name was known to numerous past Law Student Reporters, who jumped at a chance to meet him in person when we talked him into coming out to the Thursday night Hospitality Suite.

8. You can follow along even if you’re not present.

Whether you’re in another panel at the same conference, or whether you’re in another state, you can use twitter to keep in touch with what’s going on at the event you’re missing.

LSRs interested in more than one panel going on at the same time could follow along even while covering their own. While the Fair Use panel was going on, I was also following the tweets of Dana Broughton and Anna Oakes at the Non-Traditional Trademark Panel.

LSAG Vice Chair Micah Ascano (@PainIntheAscano), who wasn’t able to attend #IPLSpring this year due to his debut as a teacher at a law school, said that he managed to get some networking calls set up just through his interactions on Twitter with conference attendees.

And, of course, if you were unable to attend the 29th Annual ABA Intellectual Property Law Section Spring Conference on April 2-4, 2014 in person, you may catch up on everything you missed by reading the tweets and blog entries of the ABA-IPL’s Law Student Reporters. 

All screencaps are from Twitter, which hopefully should qualify for Fair Use since this is both educational and a news context. :D