Laying the Foundations for Budget Constrained Brand Protection

Lisa Garono, Of Counsel at Haynes Boone
Best practices for protecting your brands in the Internet space
Jan 7 2010
41 mins
Laying the Foundations for Budget Constrained Brand Protection
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Intellectual Property

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  • We’ll take an in-depth look at the new Federal Financial Institutions Examination Council (FFIEC) guidelines on social media and consumer compliance risk, and how they may impact your organization. We’ll break down nearly 20 pages of dense government material, distilling the key topics for legal, compliance, risk and finance professionals, including:

    •The purpose and rationale for the new guidelines
    •Which reports, metrics and other artifacts best address the new guidance
    •What your organization should do next

    Join us February 19 for a live webcast featuring James Carnall, Vice President of Cyber Intelligence for Cyveillance.
  • Recently, as the number of patent infringement actions filed by foreign companies against Korean competitors has increased, Korean companies have responded aggressively with counteractions in multiple countries, frequently including Korea. Under this changing environment, the quality and size of the Korean patent portfolio plays a critical role in balancing the overall positions between the disputing parties.

    With recent cases such as the Apple v. Samsung disputes, Osram v. LG Innotek & Samsung LED and the “Viagra case” between Pfizer and Hanmi Pharmaceutical, having a clear understanding of the South Korean legal framework and enforcement practice becomes crucial in successfully protecting your patent portfolio and other forms of IP rights.

    Whether you, or your clients, face litigation in Korea, or will potentially be facing it in the future, this webinar will help you understand the essence of Korea’s legal framework, analyse different enforcement options, and give advice on effective counter-measures.

    Speakers include:
    • James Nurton, managing editor, Managing IP (moderator)
    • Mr. J. Kenneth Oh, vice president, head of IP division, LG Display Co., Ltd.
    • Mr. Duck Soon Chang, partner, Kim & Chang
    • Mr. Stephen T. Bang, partner, Kim & Chang

    The webinar will focus on South Korea’s legal framework and patent enforcement practice, covering:
    • Enforcement options in South Korea
    • How to utilize the bifurcated court system
    • Effective counter-measures to an invalidity defence
    • Analysis and discussion of South Korea’s most notable patent infringement cases

    The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
  • NOTE: All slides are now ready for download under:

    Recently, there has been a rise in allegations that the high costs of the patent litigation system in the US are being exploited to reach settlements even on low-value patents. This has led to concerns from technology companies as well as end-users that the patent system is impeding business development and innovation.

    Key to this debate is the question of damages in litigation: How are they awarded? What is proportionate? Are any changes in the law needed? In this webinar, our panellists will look at the issues raised by the troll debate, what strategies plaintiffs and defendants can adopt and what changes, if any, are needed.

    Whether you, or your clients, face threats from trolls, or will potentially be affected in the future, this webinar will help you understand the essence of the problem, how existing laws can already face these challenges and the consequences of new legislation on the issue.

    Speakers include:
    • James Nurton, managing editor, Managing IP (moderator)
    • Eric E. Bensen, intellectual property author and independent consultant
    • Bryan W. Butler, IP Counsel, IBM
    • Charles R. Macedo, Partner, Amster, Rothstein & Ebenstein LLP

    The webinar will focus on patent trolls and damages, covering:
    • What is ‘troll-behaviour’, and what is acceptable?
    • How can existing laws be utilized to tackle the problem?
    • What is being done to change the situation, and will these initiatives be effective or harmful?

    With the troll issue being discussed around the world, there is still a lack of definition and clear understanding. This webinar will provide an invaluable guide for patent owners who are affected by this problem, or might be in the future, as well as their advisers. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.

    NOTE: All slides are now ready for download under:
  • Geoffrey Mason, Esq., Founder and CEO of FastPatentPartner, will discuss how leading patent firms are winning cases and clients in new ways by using custom-built, comprehensive patent data sets and proprietary analytics technologies. Both case studies and practical, do-it-yourself advice will be presented regarding:

    •How Microsoft's acquisition of Skype would have turned out differently if inventor-based patent searching had been used instead of company-based searching
    •How a litigious, well-known technology company discovered issues with its patents pre-litigation by using USPTO patent assignment records in new ways
    •How to use PAIR data to analyze prosecution counsel technical expertise and to pitch your own expertise to clients
  • Social media continues to presents challenges for security professionals as more platforms emerge and more employees and customers than ever interact with them every day. Data leakage via social media platforms and user-generated content websites can compromise customer data, intellectual property, and confidential business operations, as well reveal valuable information that threat actors can use to target your organization.

    We will review common data leakage threats and the importance of monitoring user-generated content, followed by a question and answer session with our experts to review real-life challenges you may be facing.

    What you’ll learn:
    •What kinds of data are most commonly leaked from enterprise organizations
    •Ways your own data could be leaving the building
    •Why DLP solutions only solve part of your problems
    •How third-party monitoring can help reduce the risks

    Featured Speakers:
    Eric Olson (Vice President, Product Strategy)
    Alan Jameson (Product Manager, Former Lead China Analyst)
  • Heard about big data but not sure of its impact in the legal world?
    Join this exciting webcast to learn how applying big data to law created a new category of tools called Legal Analytics, which can help you craft successful IP strategy, win cases, and close business.
    Hear from our customers NXP Semiconductors, Impax Labs, and Fenwick & West, how they are using Legal Analytics as the winning edge in the highly competitive business and practice of law.
  • Managing IP, in association with Guerra IP, invites you to join this free web seminar focusing on IP litigation in relation to companies’ overall IP portfolio strategy in Brazil. The seminar will take place at 12pm EDT/ 2pm BRST/ 4pm GMT.

    Brazil is the world’s 6th largest economy and companies are giving more focus to this rapidly expanding market. Whether you, or your clients, are currently doing business in Brazil, or will potentially move into this market sometime in the future, this webinar will help you understand how IP litigation should factor into your overall IP strategy in this regulation heavy country.

    Speakers include:
    •James Nurton, managing editor, Managing IP (moderator)
    •José Graça Aranha, Regional Director for Latin America, WIPO
    •Colette Durst, senior IP counsel Trademarks, Tyco
    •Sherry Rollo, partner, Husch Blackwell
    •Ricardo Pinho, partner, Guerra IP Brazil

    The webinar will focus on IP litigation, covering:
    * Applicable laws and rules, and also the practical, strategic issues surrounding choice of venue, costs, timing, damage recovery and injunctive relief
    * Case studies and the perspectives of in-house counsel who have recent experience of litigation in the country

    Brazil is a large country, and for many has an unfamiliar legal system. This webinar will provide an invaluable guide for patent and trade mark owners who are investing in the country now or plan to in the future, as well as their advisers. The live audience will be able to ask questions of the speakers during the webinar, which will be in English and will last one hour.
  • A guide to IP protection and strategic investment in Myanmar, September 2013:
    •The unfolding of business in the ‘last frontier’ market of Asia: How domestic industry in progressing and how multi-nationals are expanding in Myanmar

    •How can they make IP pay?

    •An overview of new legislation in Myanmar pertaining to IP, Licensing and Trade: Identifying the gaps in IP rights legislation

    •The government’s moves to comply with TRIPS: Commitment and timeframe

    •Insightfully strategising for a future of rapid development and change: How multinational companies can gain edge and effectively invest in the burgeoning market whilst safeguarding their intellectual assets.
  • In this webinar we will look at the situation surrounding software patents in Europe. Following an up-to-date overview of European patent law around software, our panel will consider the relative importance of patent protection in different countries, some successful and unsuccessful cases and whether the national route can offer a favourable alternative to the EP route. They will also discuss the effect of European software patentability on filing strategies and provide practical guidance to aid prosecution. You will be invited to submit questions to the panel live during the broadcast and there will be time at the end for the panelists to respond to your individual queries.
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  • Trademark Issues in an Online Environment Recorded: Apr 15 2010 53 mins
    Trademark Issues in an Online Environment
  • Cost Management Practices for Global Patent Portfolios Recorded: Mar 9 2010 91 mins
    Cost Management Practices for Global Patent Portfolios

    Aki Ryuka
    - Japanese Patent Attorney, founder of RYUKA, Japan, which has 15 Patent Attorneys and 60 staff, in total

    Andrew Schwaab
    -Registered Patent Attorney in DLA Piper's Silicon Valley office
    -President of San Francisco Intellectual Property Law Association

    Michael Williams
    -European and UK Patent Attorney
    -Partner at Cleveland in London

    Dale Lazar
    - Registered Patent Attorney and Office Managing Partner in DLA Piper's Northern Virginia office
    - Adjunct Professor at George Mason University Law School

    This interactive panel presentation features three panelists who will each share their own regional perspective and expertise on the decision-making behind patent portfolio management. Mr. Schwaab of DLA Piper (Silicon Valley, US) will start our panelists with key concepts for selecting IP and making decisions of greatest strategic value to maximize benefits from patent filings. Mr. Williams of Cleveland (London) will discuss global patent foundations enabling patentees to successfully navigate the EPO's new laws and reduce prosecution costs (in Europe and beyond), while maintaining robust protection in the U.S., Asia and beyond. Essential aspects of ordering and timing prosecution of inventions filed in multiple countries will be covered by Mr. Ryuka of Ryuka Law Firm (Tokyo), who will provide his winning insights into various adjustments to make as well as the merits thereof. Moderator Dale Lazar will lead the panelists through this discussion and field an in-depth question & answer session for participants at the end.
  • What's Mine is Mine &What's Yours is Mine: Trademarks as Property Recorded: Jan 7 2010 46 mins
    Brands can be powerful and extremely valuable. Your company may take every step imaginable to establish and enforce its trademark rights. But is that enough? What can you expect from a statute that is primarily designed to protect consumers? Nate Garhart and Deborah Davis Han will use role-playing and real-life examples to present a lively discussion of the changing expectations of trademark owners in a Web 2.0 world.
  • Laying the Foundations for Budget Constrained Brand Protection Recorded: Jan 7 2010 41 mins
    Best practices for protecting your brands in the Internet space
  • Emerging Trademark Threats with Social Media Tools Recorded: Jan 7 2010 48 mins
    Learn how the explosion of Facebook, MySpace, YouTube and other social media sites has affected trademark law and rights, and how to protect your valuable brands on these new Internet sites.
  • Legal Considerations in Selecting, Protecting & Using Brand Names Recorded: Jan 7 2010 46 mins
    In this trademark law overview, you will learn the basics of trademark law, including the following: Items which can serve as trademarks; how trademark rights are created; the differences between registered and "common law" marks; how to choose, clear and protect strong brands; dealing with trademark conflicts (infringement); when to use the "tm" and "(R)" symbols; and how can trademark rights be weakened or lost? This presentation is geared toward lawyers and decision-makers desiring a basic understanding of these legal concepts.
  • Trademark Law - Best Practices for Busy Professionals Recorded: Jan 7 2010 46 mins
    Tom specialises in developing brand protection strategies for growing and ambitious companies that contribute to their business goals. He provides tenacious and pragmatic defence of important IP rights through effective use of the registration system including the opposition processes.
    Tom has in-depth experience in the clothing/footwear/accessories industry where his understanding of the interrelationship between IP rights is key to the effective protection of brands and designs.
    Similarly, this understanding has helped clients in the fields of software and business/financial services and medical/pharma products.
    Tomhas experience in senior management, is an Alumnus of London
    Business School and has set up and run his own business.
  • Abusive Domain Names: Enforcement Options & ICANN Policy Update Recorded: Oct 8 2009 42 mins
    Mike Rodenbaugh presents a detailed overview of the growing problem of abusively registered domain names, enabling cybersquatting, counterfeiting, trademark infringement, copyright infringement, phishing, malware distribution and distribution of other criminal and/or infringing material.
    International enforcement options will be outlined, including notices to enabling parties, arbitration and litigation. The presentation concludes with a brief discussion of the current status of various policy initiatives of ICANN, including efforts to mitigate abusive behavior in new top-level domains (TLDs), the Registration Abuse Policies Working Group, and efforts to amend the Registrar Accreditation Agreement.

    Mike is the principal attorney at Rodenbaugh Law, a small law firm in California which represents businesses in all matters of trademark and copyright protection and enforcement. Mike formerly was the primary trademark enforcement attorney for Yahoo! Inc. for more than seven years.
    Mike represents the Business Constituency at ICANN (, as an elected Councilor to the Generic Names Supporting Organization (GNSO). The GNSO Council develops ICANN policy with respect to generic TLDs such as .com, .mobi, .museum, .travel, .jobs and many hundreds more coming in 2010 and beyond.
  • Preventing Licensing Discussions from Escalating to Litigation Recorded: Oct 8 2009 29 mins
    Preventing Licensing Discussions from Escalating to Litigation
  • Developing a Winning IP Litigation Strategy in Challenging Times Recorded: Oct 8 2009 49 mins
    Effective and cost efficient strategies for navigating patent and other IP litigation in these challenging economic times. From early case assessments to winning and bold litigation concepts to help in-house counsel properly balance and control the rising costs of major case litigation.
  • Appealing Beyond the Supreme Court: Patent Reform Legislation Recorded: Oct 8 2009 46 mins
    With litigation costs and awards significantly increasing, many are seeking answers outside of the courtroom. Controversial legislation to revamp the law of damages, challenges to patents outside the court, venue and more is held up again in Congress. If passed, the legislation could mean dramatic changes to your business model and patent strategies.

    Jon W. Dudas served as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) until January 18, 2009. [1] He was nominated to the position by former President George W. Bush in March 2004 and appointed in July 2004. Dudas previously served as acting Under Secretary and Director, and Deputy Under Secretary and Deputy Director from 2002 to 2004.
  • Does The Sun Shine On Inventive Process? In re Bilski, S.Ct.2009 Recorded: Oct 8 2009 40 mins
    In 1981, the U.S. Supreme Court last answered the question of "what is patentable" in Diamond v. Diehr during a time when the Internet, software, financial products and biotech industries were at a nascent IP stage. Jumping forward 28 years, the Supreme Court has now decided it is time to revisit that same question in In re Bilski to be heard in December of 2009. That decision is intended to clarify whether inventors can patent financial business products, software, Internet business processes, or biotech diagnostic processes.

    This Webcast will discuss In re Bilski and whether the Supreme Court will pull back from its oft-quoted statement that "everything under the sun that is made by man" is patentable.

    Michael Molano is Partner in the Silicon Valley office of Sheppard, Mullin, Richter & Hampton LLP, an international law firm with over 550 lawyers in the U.S. and Asia. He concentrates his practice in patent litigation, patent prosecution and transactional intellectual property matters. Mr. Molano received a B.S. in Electrical Engineering from Northwestern University and a J.D. from St. Louis University School of Law.
  • Six Steps to Reduce IP Litigation Costs and Improve Performance Recorded: Oct 8 2009 46 mins
    David Donoghue draws on his IP litigation experience, as both outside counsel and in-house counsel for a Fortune 100 company, to identify ways to reduce what too often become massive litigation fees and expenses while actually improving the effectiveness of your legal team. Mr. Donoghue looks at the relationship of inside and outside counsel and identifies specific ways to optimize that relationship to focus costs on action items that promote your business needs and, by doing that, to increase your legal team's focus on the business drivers and goals in the case instead of a generic plan to "win" the case. Mr. Donoghue also pulls the curtain back on joint defense groups and identifies straightforward techniques for managing joint defense groups in order to avoid unnecessary expenses while deriving the synergy expected from the groups. Mr. Donoghue also identifies ways to manage and control a discovery process that too often takes on a life of its own. Finally, Mr. Donoghue will answer participants questions to identify solutions focused upon your specific needs.
  • Recording Industry vs. The People (CLE Credit Pending) Recorded: Jun 9 2009 60 mins
    Veteran New York City business litigation attorney Ray Beckerman, author of the popular copyright law blog “Recording Industry vs. The People”, will discuss recent developments and key issues in the RIAA’s litigation campaign against individuals and families.
    The landscape in this area is changing on a day to day basis, so it will not be known until the date of the presentation what the exact content will be, but among the issues which Ray may discuss are:
    1. How the RIAA gets ISP’s and institutions of higher learning to “name names”.
    2. The nature and quality of the “evidence” the RIAA has when it starts the litigation process.
    3. Why there are so many false positives.
    4. What the RIAA alleges in its complaint, whether this meets the standards for pleading copyright infringement, and what constitutes a “distribution” under the US Copyright Act.
    5. The economics of the lawsuits and the effect that has on outcomes.
    6. Whether the RIAA’s claim for “statutory damages” passes constitutional muster.
    7. Recent events and likely trends.
    8. What effect the litigations have had on the music business.
  • The Future of Google Book Search Recorded: Jun 9 2009 42 mins
    Four years ago, a broad class of authors and five publishers filed lawsuits against Google Book Search. Last October, Google, authors, and publishers announced a groundbreaking settlement agreement that will dramatically increase access to millions of books in the US and create a new market for authors and publishers to sell their works. This talk will discuss how Book Search and the settlement benefit rightsholders, libraries, and readers.
  • Anti-Counterfeiting Trade Agreement (ACTA), WIPO and in Canada Recorded: Jun 9 2009 31 mins
    Howard Knopf, Counsel to Macera & Jarzyna, LLP in Ottawa Canada is has been involved in the making of copyright legislation, international work at WIPO and for NGOs, advocacy in the Supreme Courts of both the USA and Canada, and Canadian Federal Court, Federal Court of Appeal and Copyright Board work for almost three decades.

    His 30 minute presentation will focus on:

    • What we know, don’t know and need to know about the mostly secret ACTA negotiations. Will iPods and laptops be seized at the border? Will ISPs have to implement a “three strikes” regime that could deprive countless ordinary households of internet access?
    • Whither WIPO? In particular, what is the status of a possible treaty for the rights of the blind, and other current initiatives? WIPO has been unable to make any progress in international norm setting since 1996 - in copyright or any other substantive area. This is a potentially important crossroads for the organization that is home to the Berne Convention.
    • Canada has had two recent copyright reform bills that died due to federal elections. The second bill (C-61) was very responsive to US entertainment industry lobbying, but also very controversial. What was in Bill C-61 and where are things likely to go from here? Should Canada be on the USTR’s s. 301 Priority Watch List? Will Canada be an international bellwether for the future of copyright reform?
  • Law vs. Technology: Embracing Not Suing New Technologies (CLE) Recorded: Jun 9 2009 60 mins
    E. Michael Harrington, Professor of Music, Music Management & Intellectual Property and music copyright expert witness/consultant, will present a four-part analysis of the present troublesome state of affairs in the music industry. The focus of the presentation will revolve around the often confusing and competing roles of copyright, creativity, ethics, technology and business.

    Beginning with the reasons why copyright exists and how it is supposed to function, Harrington will demonstrate why copyright succeeds and fails, how it has changed in light of new technology, and how new technologies ranging from social network sites (Twitter, Facebook, MySpace and others) to file sharing applications and services (LimeWire, PirateBay, Mininova, BitTorrent and others) have been and will remain far ahead of the music and entertainment industries, attorneys and legislators. Secondly, he will describe the four principal reasons why copyright law is often inadequate and frequently unobserved. Thirdly, he will discuss the present “solutions” to the problems posed by the new technologies, spanning the gamut from extreme anarchy to moderate middle-of-the-road measures to draconian proposed federal legislation and the ineffective “sue ‘em all” fervor of the entertainment industry. Cases pertaining to current issues of the digital delivery of IP, including MGM v. Grokster, Twentieth Century Fox et al. v. Cablevision Systems Corporation et ano and Atlantic Recording Corp., et al. v. XM Satellite Radio Inc. will be discussed. Finally, he will recommend more realistic and more daring solutions, as well as a glimpse of what new music copyright issues will arise in 2009 and beyond.
  • Successfully Defending Software Audits (CLE Credit Pending) Recorded: Jun 9 2009 64 mins
    Shrinking IT budgets and fierce competition among software publishers have created explosive growth in the incidence and frequency of software audits - a mechanism by which software publishers investigate their customers to determine if they are in compliance with software licenses and copyright laws. In addition to developing internal enforcement operations, many publishers have engaged trade associations to perform enforcement activity under power of attorney. Many companies are paying substantial fines and suffering negative publicity. Properly preparing for and responding to software audits can reduce the financial and organizational impact on your business. According to the BSA's Sixth Annual Global Software Piracy Study, "...a large portion of non-compliant software is deployed by mistake, either by consumers buying cheap software that they do not realize is counterfeit, or by IT departments making mistakes in managing volume licenses." Businesses that are most prepared and properly represented will have the greatest success in defending the inevitable software audit.
  • Creative Commons: The Sharing Standard Recorded: Jun 9 2009 45 mins
    Creative Commons is a non-profit organization that provides free tools that allow authors, scientists, artists, and educators to protect their creative work with different levels of protection. My presentation will dive into Creative Commons' history, our mission, and how our legal and technical tools work on the web. I'll also detail interesting case studies of how our licenses have been used in the wild and finally explain what the future holds for CC.
  • HADOPI Recorded: Jun 9 2009 39 mins
Trends and Developments in Intellectual Property
The importance of intellectual property protection is a key factor for economic growth and advancement in the global economy.

Economists estimate that two-thirds of the value of large businesses in the U.S. can be traced to intangible assets.

With the increasing importance of intellectual property in an information economy, so to increases the risk of infringement.

This channel will see leading IP experts discussing trends and developments in intellectual property law and strategy, offering comprehensive advice for managing IP assets, and protection from infringement.

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  • Title: Laying the Foundations for Budget Constrained Brand Protection
  • Live at: Jan 7 2010 8:00 pm
  • Presented by: Lisa Garono, Of Counsel at Haynes Boone
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