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Fundamentals of Copyright Law in the Data Era 2014


Speaker(s): Deirdre Merrill, Holly A. Hogan, Katherine C. Spelman, Marcelo Halpern, Naomi Jane Gray, Rachel Beth Evans, Sophie Cohen, Steven P. Tapia
Recorded on: Jun. 30, 2014
PLI Program #: 51126

OVERVIEW

Ms. Hogan is a partner in the San Francisco office of K&L Gates focusing on intellectual property litigation.  She works with technology and consumer goods companies to resolve intellectual property disputes with the “business big picture" in mind – whether it be through negotiation, litigation, or trial.  Her practice spans the full spectrum of intellectual property litigation and includes patent, trademark, and copyright matters before federal courts, the International Trade Commission, and the Federal Circuit.  She has been recognized as a “Rising Star” for intellectual property litigation by Super Lawyers Magazine, and was named to The Recorder’s “Lawyers on the Fast Track” list.

Ms. Hogan has both jury and court trial experience, as well as experience in all phases of litigation from the filing of a complaint through appeal.  She has examined witnesses at trial, and deposed executives and other key witnesses.  Ms. Hogan has also counseled clients on intellectual property issues, including pre-suit negotiations and developing strategies with respect to lawsuits filed against the clients’ customers.  

Ms. Hogan has represented clients in patent litigation involving a variety of technologies, including wireless data cards, video transcoding software, video games, networking, vehicle tracking, and web application servers.  Additionally, Ms. Hogan has worked with clients in the consumer goods industry in trademark and copyright litigation.  She is also particularly skilled at working with companies that are newcomers to intellectual property litigation, as well as companies that need strategy coordination across multiple lawsuits. 

Her track record of finding solutions to IP-related disputes includes:]

  • Obtaining summary judgment of invalidity and non-infringement in a patent infringement suit involving a patent that had previously survived re-examination.
  • Obtaining summary judgment of infringement and a prospective injunction for a trademark owner.
  • Obtaining early, "zero dollar” dismissal in a patent infringement suit by identifying a licensing defense due to extensive knowledge of the client’s business.
In her pro bono practice, Ms. Hogan has helped victims of sexual harassment and assault, as well as victim advocacy groups. 

PROFESSIONAL BACKGROUND

Prior to joining the firm, Ms. Hogan worked for another area law firm where she represented business and individual clients in trial and appellate matters with an emphasis on complex litigation, as well as employment law and constitutional law. Ms. Hogan was also a Deputy District Attorney at a bay area District Attorney’s office where she first-chaired jury trials.  

Ms. Hogan is a graduate of Harvard Law School, where she served as student body president, and was the recipient of both the Kaufman Fellowship and the Dean’s Award for Community Leadership.  She is currently the President of the Harvard Law School Association of Northern California.  She received her undergraduate degree from the University of San Francisco, where she was also student body president, as well as the Valedictorian.  The University of San Francisco recognized Ms. Hogan as the inaugural recipient of the Distinguished Recent Graduate Award.

In her pro bono practice, Ms. Hogan has assisted student victims of sexual harassment and assault with the Department of Education, Office for Civil Rights complaint process, and she frequently writes and speaks on this subject.  On behalf of victim advocacy groups, Ms. Hogan submitted an amicus curiae brief to the California Supreme Court in a criminal case, urging the California Supreme Court to reject the defendant’s efforts in the appeal of his conviction to erode California’s rape shield law.  In a unanimous decision favoring victims, the California Supreme Court upheld the defendant’s conviction.  People v. Fontana, 49 Cal.4th 351 (2010).  Ms. Hogan was also part of a team of K&L Gates attorneys that obtained asylum for a woman who was subject to gender violence in her home country.  She also successfully defended a courtroom sketch artist in a contempt matter.

PUBLICATIONS
  • “Minding the Store: Trade Dress Protection for Retail Store Designs,” Landslide, A Publication of the ABA Section of Intellectual Property Law, Volume 6, No. 4.  March/April 2014.
  • Intervening Rights Following Reissue: Protecting an Accused Infringer’s Pre-Reissue Activity, ABA Intellectual Property Litigation Newsletter, Volume 21, No. 4.  Summer 2010.
  • What Athletic Departments Must Know About Title IX and Sexual Harassment, Marquette Sports Law Review, 16 Marq. Sports L. Rev. 317.  Spring 2006.
  • Title IX Requires Colleges & Universities to Eliminate the Hostile Environment Caused by Campus Sexual Assault, Security on Campus, Inc. April 2005.
  • The Real Choice in a Perceived "Catch-22": Providing Fairness to Both the Accused and Complaining Students in College Sexual Assault Disciplinary Proceedings, Journal of Law and Education, 38 J.L. & Educ. 277, April 2009.
  • Changing Social Norms? Title IX and Legal Activism Comments from the Spring 2007 Harvard Journal of Law & Gender Conference, Harvard Journal and Law and Gender, 31 Harvard J.L. & Gender 367, Comments by Holly Hogan, Summer 2008.
  • The False Dichotomy of Rape Trauma Syndrome, Cardozo Journal of Law and Gender, S12 Cardozo J.L. & Gender 529.  Spring 2006.
PRESENTATIONS
  • IP Bytes, Hot Topics in Trademark Law, Bar Association of San Francisco Intellectual Property Section, July 2013
  • Discovery Best Practices, K&L Gates Professional Development Program, December 2011
  • Harvard Law School Journal on Law & Gender, Changing Social Norms? Title IX and Legal Activism, Panelist, Title IX and Sexual Assault Panel, Spring, 2007
  • Seattle University Master of Sports Administration and Leadership Program, Title IX and Sexual Assault, Presenter, Fall, 2007 and Fall, 2009
PROFESSIONAL/CIVIC ACTIVITIES
  • Harvard Law School Association of Northern California, President  
  • Board of Advisors, University of San Francisco's Leo T. McCarthy Center for Public Service and the Common Good
  • Executive Committee, Bar Association of San Francisco Intellectual Property Section
  • Charter Member and Mentoring Program Chair, the CLUB Silicon Valley (An Incubator of Women Leaders)
  • WILPOWER program participant, Leading Women in Technology (2012 program)we
AWARDS
  • University of San Francisco, Distinguished Recent Graduate Award
  • Named to The Recorder’s 2013 Lawyers on the Fast Track list, recognizing 50 attorneys whose early accomplishments indicate they will be tomorrow’s top lawyers and leaders
  • Northern California Super Lawyers, “Rising Star”
ADMISSIONS
  • California
  • United States Court of Appeals for the Federal Circuit
  • United States Court of Appeals for the Ninth Circuit
  • United States District Court for the Northern District of California
  • United States District Court for the Central District of California
  • United States District Court for the Southern District of California
  • United States District Court for the Eastern District of California
EDUCATION

J.D., Harvard Law School, 2005 
B.A., University of San Francisco, 2002 (magna cum laude

REPRESENTATIVE WORK
  • Implicit Networks, Inc. v. F5 Networks, Inc. (Northern District of California) Obtained summary judgment of both non-infringement and invalidity for F5 Networks, Inc. in patent infringement suit involving network technology patents that had previously survived re-examination, following a successful claim construction ruling.  Patentee voluntarily dismissed appeal. This victory was profiled in the firm’s Law360 IP Practice Group of the Year award, available here.
  • San Miguel v. Ramar Foods, International, (Central District of California) Obtained summary judgment and an injunction on Ramar’s trademark infringement claim over San Miguel’s use of the trademark “Magnolia.”
  • DNT, LLC v. Novatel Wireless, Inc. (Eastern District of Virginia) Complete jury defense verdict for Novatel Wireless, Inc. in a matter against patent holding company Acacia involving wireless data cards.  
  • Neustar, Inc. v. F5 Networks, Inc. (Northern District of California)  Represented F5 in a breach of contract case brought by Neustar, Inc. involving a technology license.  Following depositions of key witnesses and the exchange economic expert reports, the case settled on terms favorable to F5.
  • MedioStream v. Acer, Inc., et al (Northern District of Californial) Represented Acer and Gateway in patent infringement action transferred from the Eastern District of Texas to the Northern District of California following a successful petition for writ of mandamus to the Federal Circuit. Case resolved.
  • SPH America, LLC v. Novatel Wireless, Inc. (Southern District of California) Represented Novatel Wireless in patent infringement action in the Southern District of California involving 3G technology.  Case resolved.
  • Wistron v. Samsung Electronic Co., (Northern District of California) Represented Wistron in a patent infringement action brought by Samsung relating to computer keyboard functions, battery power-saving, and data storage and retrieval.  The parties entered into a patent license agreement on a mutually acceptable basis, and the lawsuits between them were dismissed.


Areas of Practice

Kate Spelman has more than 30 years of experience providing strategic advice, design and implementation counsel for large, mid-sized and startup companies on copyright, trademark, trade secret and patent matters, both nationally and internationally, and has a special focus on media, licensing and mass digitization issues. Kate advises and counsels clients on the development, production, sale and defense of work related to emerging content distribution strategies and challenges, special issues in news reporting including repurposing content, and firewall and paywall configuration in light of changes in the fair use defense.

Kate is a frequent speaker on the progress of emerging copyright and digital publishing issues, and has advised authors, nonprofit and for-profit publishers, and internet service providers on the new language and provisions of the changed, global distribution environment. She has represented large digital publishing companies in international distribution agreements as well as represented developers and designers who are building and launching tools for online transmissions, storytelling, expression and art.

Additionally, Kate has experience assisting clients with Open Source licensing issues, including Open Source integrated licenses, audits, mergers and acquisitions due diligence, and compliance negotiations. Kate also helps clients design independent holding companies in the U.S. and in offshore intellectual property asset management. She has experience with intellectual property asset audits, and has assisted companies in proactive and reactive Sarbanes-Oxley compliance reporting requirements.

Academics

•           Pepperdine University (Certificate in Dispute Resolution, 1990)
•           University of Wisconsin Law School (J.D., 1980)
•           University of Michigan (B.A., Classics and Latin, 1976)


Deirdre Merrill is the Director of Contracts at Chronicle Books LLC in San Francisco, California.  One of the most admired and respected independent publishing companies in the U.S., Chronicle Books was founded in 1967 and over the years has developed a reputation for award-winning, innovative books.  The company continues to challenge conventional publishing wisdom, setting trends in both subject and format, maintaining a list that includes much admired illustrated books and gift products in design, art, architecture, photography, food, lifestyle, pop culture, and acclaimed children’s titles. Chronicle Books’ objective is to create and distribute exceptional publishing that’s instantly recognizable for its spirit, creativity, and value.

In her work at Chronicle Books over the last 16 years, Ms. Merrill’s primary focus has been drafting, negotiating, and maintaining copyright license agreements between the publishing house and authors, photographers, illustrators, and licensors, along with their respective agents and attorneys.  Her role includes negotiating and securing of digital rights for both backlist and front list titles published by Chronicle Books.  In addition she supervises the contracts and permissions department, helps to maintain the company’s trademark portfolio, advises the subsidiary rights licensing division and custom publishing departments, and supervises copyright registration for all titles published by Chronicle Books.

Education:

  • J.D., University of San Francisco School of Law, 1999
  • B.A, Santa Clara University, 1995

Affiliations: 

  • Member, California State Bar Association, 2000-present
  • Member, The Intellectual Property Law Section of the State Bar of California


Marcelo Halpern is a partner with the firm's Business practice and a member of the Technology Transactions & Privacy group.  Marcelo's practice focuses on transactional, strategic and corporate representation of global "FORTUNE 100" companies, start-up and emerging growth companies, as well as U.S.-based and international governments and non-profits. His experience includes structuring and negotiating technology and intellectual property-oriented strategic alliances and joint ventures; software, data and content licensing; outsourcing and ERP implementation transactions; counseling on digital strategy concerns including open source licensing, data security, data use and privacy issues (including HIPAA, GLB and cross-border data privacy issues); hosting, cloud computing and software services agreements; Internet exchanges and marketplaces; Internet advertising and sponsorship agreements; research and development transactions; private labeling, co-branding and other marketing and distribution strategies; and intellectual property and technology issues arising in the context of mergers and acquisitions, financing and bankruptcy transactions. Marcelo also provides general corporate representation to software, consulting, Internet, e-commerce and technology companies.

Education

  • Columbia University School of Law, J.D., 1992
  • Columbia University, Graduate School of Business, M.B.A., 1992
  • Wesleyan University, B.A., 1985

Professional Recognition

  • Chambers' USA Guide to Leading Business Lawyers, 2004 - present 
  • The Best Lawyers in America, 2006 - Present(2016 Technology Law "Lawyer of the Year" for Chicago)
  • Illinois Leading Lawyers Network, 2004 - present 
  • Legal 500, Leading Lawyer, 2005 - present

Professional Leadership

  • Practising Law Institute, Understanding the Intellectual Property License program, Chair
  • Illinois Legal Aid Online, Board of Directors, Immediate Past President
  • International Technology Law Association (ITechLaw), Membership Committee, Local Representative 
  • American Bar Association, Science and Technology Section, Member
  • Illinois State Bar Association, Member
  • Chicago Bar Association, Computer Law Committee, Member


Naomi Jane Gray focuses her practice on intellectual property (including copyrights, trademarks and trade secrets) and commercial litigation, arbitration and counseling.  She has managed complex cases in all phases of litigation, from pre-litigation counseling through appellate review, and has represented clients in such diverse industries as print and on-line publishing, Internet start-ups, financial and information services, advertising, digital audio manufacturing, fashion, software, medical device manufacturing and the motion picture industry.  Ms. Gray serves as an arbitrator on the Commercial Panel of the American Arbitration Association, presiding over commercial and intellectual property disputes. 

Ms. Gray authors the copyright law blog Shades of Gray®, www.shadesofgraylaw.com, and is a frequent speaker on topical issues in the copyright area, having appeared at events hosted by the Practising Law Institute; the American Bar Association; the Copyright Society of the U.S.A; the American Intellectual Property Association; the State Bar of California; the San Francisco Intellectual Property Law Association; the Bar Association of San Francisco; and the Center for Law, Technology and the Arts of Case Western Reserve University School of Law.

Ms. Gray is a member of the Executive Committee of the Copyright Society of the U.S.A., and is a past Trustee, past Chapters Co-Chair and past Chair of the Northern California Chapter of the Society.  She serves as a co-chair of the Copyright Committee of the Intellectual Property Committee of the Litigation Section of the American Bar Association.  She also served on the Committee on Copyrights and Literary Property of the Association of the Bar of the City of New York from 2000-2003. 

Ms. Gray is a 1995 graduate of the University of Michigan Law School, a 1992 graduate of Smith College and holds a Certificat d’Etudes Politiques from the Institut D’Etudes Politiques in Paris, France.  She is fluent in French.


Steve Tapia has practiced entertainment, media and intellectual property law for over 30 years. 

Most recently, Steve served as the in-house counsel for DIRECTV Sports Networks.  In that position, he was the primary contract negotiator and rights manager for sports programming and distribution partnerships with more than 20 teams and conferences, including the Seattle Mariners, Colorado Rockies, Pittsburgh Pirates, Pittsburgh Penguins, Seattle Sounders, Portland Timbers, Big Sky Conference and Mountain West Conference.  Prior to DIRECTV, Steve was a Senior Attorney in Microsoft’s Law and Corporate Affairs department.  His assignments included leading Microsoft’s Copyright And Trade Secret Practice Group, and advising on Microsoft’s open source licensing strategies and policies. He also was the primary counsel for MSN, MSNBC, Slate, and Microsoft’s corporate marketing and advertising operations.  In addition to legal positions, Steve also led Microsoft’s business development teams for ebooks and entertainment.  Prior to joining Microsoft, Steve was in-house counsel for HBO (specializing in motion picture and television production) and also KCET (Los Angeles’ PBS station).  Steve began his legal career as an intellectual property and media law litigator at Loeb and Loeb, Los Angeles.  He frequently speaks on copyright law, social networking, online advertising issues, media law, first amendment issues and digital downloads of entertainment content. 

Steve is admitted to practice before the U.S. Districts Courts for the Northern, Eastern, Central and Southern Districts of California and the U.S. Court of Appeals for the Ninth Circuit.  He is a member of the California State Bar.  He is a former President of the Yale Club of Southern California.  He served on the Board of Trustees of the Seattle Symphony Orchestra from 2006-2009, Interim Music Director of Faith Lutheran Church (Redmond, WA) and is a professional musician.


Sophie Cohen is IP & Marketing Counsel at the San Francisco office of the company LifeLock, Inc.

Prior to joining LifeLock, Ms. Cohen was a partner at the intellectual property law firm Cobalt LLP in Berkeley, where she advised clients on all aspects of trademark clearance, prosecution and enforcement, domain name disputes, advertising law, licensing and co-branding, as well as software and technology agreements. She also worked with clients on cutting edge copyright matters, such as thorny copyright registrations, source code protection, emerging technologies, innovative business models, fair use, user generated content, fan communities, scraping, DMCA, and work-made-for-hire issues.

Additionally, Ms. Cohen has extensive experience in promotions law, including sweepstakes, contests and raffles, with a special expertise in the fields of commercial co-venturing and cause marketing. 

Ms. Cohen is a member of the California and New York State Bars. She graduated from the Sorbonne (Paris) and the U.C. Davis School of Law.  

She currently serves as the Immediate Past Chair of the State Bar of California Intellectual Property Law Section, and the Vice-Chair of the Computer Software and New Technologies Committee of the ABA-IPL Copyright Division.  She is a member of the Copyright Society of the USA.

Ms. Cohen’s interests include wine and cooking, museums, pop culture, and classic films. She’s also a proud sci-fi geek.


Prior to joining Infosys on May 1, Rachel worked at Accenture from 2003 to 2015, most recently as the Director of Legal Services for IT Offerings. Her areas of focus include Regulatory Compliance, Complex IT Transactions, IP Licensing, Cloud Computing, Open Source Software, and Software as a Service.

Rachel has been an in-house technology lawyer in Silicon Valley for over 20 years. She grew up in the Chicago area, received her undergraduate degree in psychology from the University of Michigan in 1990, and graduated cum laude from Indiana University School of Law in 1994, where she was an editor of the Indiana Law Journal. Rachel is admitted to practice law in New York and California.

Rachel has been a speaker at numerous PLI conferences over the past 5 years. She is a Litigation Counsel of America Fellow and was recently an LCA panelist on Cloud Computing in 2014. She has also been a Judge for the Intercollegiate Ethics Bowl since 2010.

Rachel lives in San Jose, California. When she’s not working, she enjoys volunteering in animal rescue.