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Intellectual Property and Small Law Departments

This Wisdom of the Crowd, compiled from responses posted on the Intellectual Property and Small Law Department eGroups, addresses issues arising from contract clauses granting Buyer a license to use products he/she bought.

Resource Details
Interest Area: Intellectual Property
Source: Resource Library
Region: United States
IT, Privacy & eCommerce Committee

This Wisdom of the Crowd addresses policies regarding the use of Open Source Software. Includes guidance on managing open source software use and open source software audits.

David Kappos, Cravath, Swaine & Moore; John Villasenor, The Brookings Institution; and Tiffany Misrahi, World Economic Forum
18 pages

This paper considers how technology trends and a globalized economy are reshaping the way we create, distribute and access content, and provides a list of policy recommendations and copyright principles.

Resource Details
Source: Resource Library
Region: Global
Blake, Cassels & Graydon LLP

A guide to doing business in Canada. Includes review of trade and investment regulation, foreign investment rules, environmental laws, and bankruptcy.

Gemma Dreher
Rudy Guyon
Mollybeth Kocialski
Michael Williams

Whether you call it a workshop, clinic, debate or something else, this program will be interactive. The program presents two negotiation scenarios. The first scenario will include a negotiation involving a software company and a vendor. The second scenario is similar but includes a product company and a vendor. Each scenario will take the audience through a role-play exercise of negotiation, focusing on the key IP provisions (indemnity, warranty, ownership, choice of law, etc.) of a contract, and will provide valuable insight from both the customer’s and vendor’s viewpoints as to the importance of and need for those particular provisions in a contract.

Resource Details
Interest Area: Intellectual Property
Source: Meetings
Brett Dakin, Janine Greenwood, Steven Mashal, and Kim Rosenfield

How do you keep track of intellectual property (IP) assets, decide what to educate staff on IP matters regarding infringement, and choose when to seek protections regarding copyright, trademark or patent protection? What can the non-specialist do in-house, and when do you need to go to outside counsel? How do you budget for IP matters? This program will focus on the operational IP legal function — not on the basics of what is a copyright or trademark. Attend this panel to discuss different models of IP management for small law departments and nonprofits, including managing international IP and enforcement of IP against members and volunteers.

Resource Details
Interest Area: Intellectual Property
Source: Meetings
Region: United States
Karen Boudreau
Michael Cammarota
Nick Holland
Sarah Sederstrom

This program will feature interactive discussion with the audience to include such questions as: Does my license cover use on servers? How does virtualization affect everything? What do you do with source code? Are source code escrows helpful? What about escrows for software as a service (SaaS)? What is the effect of the trend limiting liability of vendors for intellectual property infringement? What is the effect of open-source software incorporated into a commercial product? What effect is the American Law Institute's Principles of the Law of Software Contracts having? What else do I need to worry about?

Resource Details
Source: Meetings
Region: United States
Lisa Haas
Keith Halverstam
Bradley Helms
Christopher Koa

Non-disclosure and confidentiality agreements are ubiquitous and used daily in a variety of contexts, from mergers and acquisitions to more ordinary course commercial transactions. Faculty will cover recent case law regarding confidentiality agreements in the acquisition context and describe some broader implications. We will provide a walk-through of common confidentiality provisions, and tips and perspectives for both the disclosing and recipient parties. Although most in-house counsel have experience with confidentiality agreements, this presentation will drill down on some of the pitfalls and important provisions that get missed. We will provide a confidentiality agreement form, marked to show different provisions and negotiating positions to serve as a useful guide.

Resource Details
Source: Meetings
Region: United States
Michael Bishop
Audra Dial
Sara Fletcher
Rachel Gervin
Sheri McGaughy

Trade secret owners are faced with a myriad of issues, especially with the increasingly global marketplace. Business owners and leaders must address the risk of outright theft of their intellectual property by competitors or would-be competitors. International communication networks that make the theft of trade secrets as easy as pushing the “send” button magnify this trend. This interactive workshop will allow the attendees to work in groups and act as business leaders facing a trade secret crisis in their companies. The attendees will then choose how to address their crisis and which legal actions to take. Each team will take turns presenting their strategy to the entire group and, if necessary, the presenter will make recommendations for additional ways the teams could have protected their trade secrets.

Resource Details
Interest Area: Intellectual Property
Source: Meetings
Region: United States
Christopher George, Shane Hardy, Casey Mangan, and Allan Poulter

Sound marks, holographic marks, three dimensional marks, scent marks and other non-traditional trademarks have become an important means for marketing departments to build and exploit their company’s brand — in addition to logos, phrases and other more traditional marks. In-house counsel need to stay informed about developments in non-traditional marks in order to keep up with business realities and protect their company’s interests. Many countries have regimes that regulate non-traditional marks, and understanding the procedures required to protect a brand’s unique shapes, sounds and smells can provide an important competitive advantage. This program will address: (1) the types of non-traditional marks that may currently be registered, and what lies ahead; (2) clearance procedures; (3) applications to register; and (4) enforcement proceedings.

Resource Details
Interest Area: Intellectual Property
Source: Meetings
Region: United States
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