Friday Morning, March 27th
Three Concurrent Sessions
8:30 AM – 1:15 PM
SESSION 5: Standard Setting -- the Interplay with IP and Competition laws Concurrent Session
Friday, 8:30 AM – 9:50 AM
Standard making organizations, the benefits derived from adopted standards and their licensing; the potential competition pit-falls from the EU and US (exclusion of non-selected technologies, patent pool, unilateral licensing practices, collective boycotts etc. and the current approach of competition authorities, including a view from the Commission); do standards bodies infringe Article 81/Section 1 if they go on discussing a standard when they know that licenses of essential patents will not be granted on FRAND terms ? Can standards organizations regulate their own affairs, or is it inevitable that competition/antitrust law enforcement will get involved? Is there a kind of patent ambush if a patent owner gives one impression, before a standard is adopted, about the royalty rates it will charge on the basis of a FRAND promise, but raises the rates afterwards? What changes, if any, need to be made in standards organizations' rules to prevent antitrust issues? Review of current enforcement cases such as Nokia v. Qualcomm and Rambus. The status of open source.
Moderator: Gonzalo Ulloa, Gómez-Acebo & Pombo, Madrid
Speakers:
Maurits Dolmans, Cleary Gottlieb Steen & Hamilton, Brussels
Standards, IP and Competition: Avoiding an unFRANDly environment
Timo Ruikka, Strategy Advisor, IPR Intellectual Property, Nokia Corp.
FRAND from a Business Perspective
Business objectives of standardization dictate that FRAND must have binding effect controlling the bargaining power of essential patent holders as licenses are negotiated much after substantial investment in standard-compliant products and services. Specifically, FRAND must mean that the total cost of licenses to all Essential patents is compatible with investing in implementations.
Jonathan Moskin, White & Case
Wolfgang von Meibom, Bird & Bird, Düsseldorf
European case law on FRAND defense in Patent Infringement Proceedings
A review of the issues with regard to a FRAND defense as a relatively new development in a patent infringement proceeding; particular attention to use with regard to “patent trolls”; review of recent German case law
Jason Albert, Director of International IP Policy, Microsoft Corp., Redmond
The Business Realities of IPRs in Standards
Recently, some in the standards community have suggested reforming how standards bodies handle IPRs, arguing that patent hold-up issues demonstrate that existing IPR policies and traditional FRAND licensing commitments no longer work. In considering reform in this area, it is vital to keep in mind the scope of the problem, the mechanisms for resolving it, how reforms might tilt the playing field, how companies in practice negotiate licenses for IPRs needed for standards, and the cost impact on standards participants.
Panelists: Jeffrey M. Butler, Jones Day Prof. Damien Geradin, Howrey, Brussels, Tilburg University, The Netherlands Patricia Martone, Ropes & Gray Richard S. Taffet, Bingham McCutchen
9:45 – 10:10 Break
SESSION 6: Patents Concurrent Session
Friday, 10:10 AM – 1:15 PM
10:10 – 11:00Japanese Patent Law Developments
Moderator: Prof. Martin Adelman, George Washington University Law School
Speakers: Masayuki Shinohara, Assistant Director, Japan Patent Office
The Japan Patent Office Initiative for Work Sharing Among IP Offices
A Coordinated Effort to Increase the Quality of Examinations, to Reduce the Costs to Applicants and the Workloads of IP Offices with features such as Common Application Format, Electronic Priority Document Exchange, Dossier Access System, Japan Fast Information Release Strategy and Patent Prosecution Highway.
Hon. Ken Asai, Judge, IP High Court, Japan
Strict Scrutiny? The IP High Court of Japan’s Judicial Review of the JPO Decisions
Are the criticisms true that the IP High Court of Japan is too strict and unfriendly to patent holders? What does a statistical analysis demonstrate?
Panelists: Charles Eloshway, Attorney-Adviser, Office of International Relations, U.S. Patent and Trademark Office, Arlington, VA John Pegram, Fish & Richardson Peter Vermeij, Vice President, European Patent Office, DG 2, Munich
Raising the Bar
11:00 – 11:45 Willful Patent Infringement: Seagate and its aftermath
An analysis of the development of the willful infringement standard and associated adverse inference related to the failure to rely upon an opinion of counsel. A look at the law before In re Seagate, what the Federal Circuit did in Seagate, and how district courts are answering the numerous questions raised by Seagate.
Moderator: John Pegram, Fish & Richardson
Speakers: John Pegram, Fish & Richardson Brian Nolan, McDermott, Will & Emery, New York
Willful Infringement and Attorney Opinions after Seagate – What’s next?
Panelists:
Q. Todd Dickinson, Vice President and General Patent Counsel, General Electric, Fairfield Kenneth Herman, Ropes & Gray Edward W. Murray, Managing Counsel, Intellectual Property Litigation, Merck & Co., Rahway
11:45 – 12:30 Medical Use Claims: A comparative analysis
Moderator: Prof. Rochelle Dreyfuss, New York University School of Law
Speakers: Jeremy Brown, Howrey, London
Medical Use Claims: New Dawn in Europe?
Non-patentability of medical methods in Europe has required ingenuity from the EPO and national Courts to provide protection for new uses of known therapeutically active products. But Courts have differed and protection is inconsistent. EPC 2000 came into effect on December 13 2007. Might it bring better and consistent protection?
Paul Tauchner, Vossius and Partner, Munich
A German Perspective on Medical Use Claims: nullity and infringement courts
John Richards, Ladas & Parry
The Written Description Requirement to Support a Medical Use Claim: A Comparative Analysis
The Canadian sound prediction requirement; data requirements in East Asia; the EPO’s need for correlation to a “disease”, and the U.S. Rasmussen decision.
12:30 – 1:15 European Union’s Agenda for Patents
Moderator:
Speakers: Harrie Temmink, Industrial Property Unit, DG Internal Market and Services, European Commission, Brussels
Towards an EU-wide jurisdiction on patent litigation
The Commission Communication "Enhancing the patent system in Europe" of April 2007 suggested the creation of an EU-wide patent jurisdiction combining features both of EPLA and a Community jurisdiction. This court should have competence for actions related to infringement and invalidity of European patents and future Community patents. Since then the Council has made considerable progress. Could an agreement be reached in the second half of 2008. What are the main features of the system that is currently being discussed?
David J. Kappos, Vice President and Assistant General Counsel, Intellectual Property Law, IBM Corp.
Soft IP and the Possibility of Finally Realizing a Pan-Europe Patent
Last year an EPO-convened conference in Munich included a section called "Scenarios for the Future". An envisioned "blue sky scenario" featured the concept of a new kind of IP that would feature strong protection like today's patent right, but instead of an injunction as the ultimate relief for infringement, would instead employ licensing, with licenses made available to all requestors. This talk expands on the blue sky scenario and the concept of soft-IP, filling in the details to advocate a new kind of license-of-right patent having pan-European scope and cost effective features."
Panelists: Prof. Alain Strowel, Covington & Burling, Saint-Louis University, Brussels David Perkins, Milbank Tweed Hadley & McCloy LLP, London Hon. Robert van Peursem, Vice President, District Court The Hague, The Netherlands
SESSION 7: Trademark Law Concurrent Session
Friday, 8:30 AM – 1:15 PM
8:30 – 9:50 Trademark and Design Law Developments in the EU: European Commission’s Agenda, European Court of Justice, Court of First Instance and OHIM
Moderator:
Speakers: David Keeling, Board of Appeal, OHIM, Alicante
Design and Trademark Developments in OHIM
William Robinson, Freshfields Bruckhaus Deringer, London
The Court of Justice and Trademarks
Harrie Temmink, Industrial Property Unit, DG Internal Market and Services, European Commission, Brussels
Are Legislative or Other Changes Needed in Trademarks or Designs?
The Trade Mark Directive was adopted in 1989 and the Community Trade Mark has been operational since 1996. Is it not about time for an exhaustive evaluation of both the harmonized national trade mark regime and the Community Trade Mark, as well as the interaction between both systems? And what about the harmonized and unified design systems?
Panelists:
Prof. David Llewelyn, Kings College London, External Director, IP Academy, Singapore Prof. Spyros Maniatis, Queen Mary, University of London
9:50 – 10:40The Right of Publicity: Developments in the United States and Europe
Moderator: John Michael Richardson, Arbitrator and Mediator
Speakers: Prof. Gillian Black, University of Edinburgh
Recent Developments in Publicity Rights in the UK: Where Now for Celebrities?
Publicity Rights in the United Kingdom are protected through an ad hoc range of doctrines resulting in the lack of any principled development. In the recent House of Lords decision in Douglas v. Hello, the theoretical and doctrinal bases for the various opinions and result leaves a number of critical questions unanswered.
Prof. Marshall Leaffer, Indiana University School of Law
Copyright Preemption and the Right of Publicity
Courts applying statutory copyright preemption of the right of publicity have produced a body of incoherent case law. Several recent cases have achieved the proper preemption outcome. A method is possible where courts can make compatible state publicity law and federal copyright law.
Jonathan Faber, President and CEO, Luminary Group
The Evolution Continues: Recent Right of Publicity Legislation and Litigation
The Right of Publicity has received interesting legislative and judicial attention in the United States producing high-profile cases and legislative proposals and amendments. Key issues include the role of domicile, debtor-creditor relationships and retroactivity.
Panelist: Prof. Lionel Bently, Cambridge University
10:40 – 11:10 Break
11:10 – 12:25 Protection for Famous Marks and Well Known Marks
What is the current state of the law in the U.S.? Is the Second Circuit decision in the Bukhara Grill case an indicator for the future or a precedent that is weakened by the fact that the plaintiff originally had a mark in the U.S. and then abandoned it? Why did it take 16 months after oral argument to decide the case? Considering the Second Circuit’s acknowledged conflict with the thCircuit decision in Grupo Gigante, is forum shopping a likely result? Which circuit is right on protection for famous marks? What role is there for state law? What are other countries doing with regard to famous and well know marks? What strategies are available to a mark owner to receive greater U.S. and global protection for its famous mark?
Moderator:
Speaker: Michelle Marsh, Kenyon & Kenyon
Panelists: Prof. Barton Beebe, Benjamin N. Cardozo School of Law, Yeshiva University Prof. Robert Brauneis, George Washington University Law School Prof. Robert Burrell, University of Queensland, Brisbane Prof. Jane Ginsburg, Columbia Law School Prof. David Llewelyn, Kings College London, External Director, IP Academy, Singapore Jonathan Moskin, White & Case
12:25 – 1:15 Event Driven Marks and “Ambush” Marketing: protection of a special’s event’s (e.g. Olympics) mark and protection against unofficial businesses deriving official-sponsor-like benefits
Moderator: Jeffrey M. Butler, Jones Day
Speakers: Peter Ruess, Freshfields Bruckhaus Deringer, Dusseldorf “Ambush” Marketing and Risks for “Event Marks: Do we need more protection?
Special events such as sports championships are expensive and sponsors pay huge sums for what they expect to be more or less exclusive rights to refer to the event in their advertising. Nonofficial competitors creatively find ways to associate themselves with the special event. In Germany, these issues with regard to World Soccer Championship for FIFA have been litigated. Should trademark law protect the sponsors? If not, should stronger protection be obtained through amending the trademark law or enacting sui generis legislation aimed at protecting the special events.
Prof. Coenraad Visser, University of South Africa, Pretoria
The Soccer World Cup 2010: Special Event and Ambush Marketing Protection in South Africa
South Africa hosts the 2010 Soccer World Cup. Recent S.A. passed legislation to give special protection to the Word Cup 2010 and its sponsors, including protection against “ambush” marketing.
Prof. Doris Long, John Marshall School of Law
Ambush Marketing and China
Ambush marketing" is already in full swing in China. Yet given the special regulations which China as already enacted, and the heightened attention paid to the protection of Olympic symbols, ambush marketers may find their efforts stymied by some novel approaches to the problem. Whether such approaches ultimately prove successful remains to be seen.
Panelists: Phillip Johnson, Barrister, 7 New Square, London Jeffrey D. Neuburger, Thelen Reid Brown Raysman & Steiner LLP (invited)
SESSION 8: Copyright Law Concurrent Session
Friday, 8:30 AM – 1:15 PM (Room 311)
Moderator:
8:30 – 9:25 Orphan Works legislation in the U.S. and around the World
Moderator:
Speakers:
Prof. Willem Grosheide, University of Utrecht
Orphan Works Regulation: The European Perspective
Oliver Metzger, U.S. Copyright Office, Wash. D.C.
Orphan Works Legislation in the U.S.
The U.S. Copyright Office and Congress over the past three years have been engaged in extensive efforts to formulate a legislative solution to the problem of orphan works. What were the issues? What were the problems? How do the current proposals in Congress deal with those issues and problems? Are any of them likely to succeed?
Panelists: Tilman Lüder, Head of Unit, Copyright and Knowledge-based Economy, DG Internal Market and Services, European Commission, Brussels Jule L. Sigall, Senior Policy Counsel/Copyright & Trademark, Microsoft Corp., Redmond Steven J. Metalitz, Mitchell Silberberg & Knupp, Wash. D.C.
9:25 – 10:55 Copyright Developments in Canada, Australia and New Zealand
Moderator: Steven J. Metalitz, Mitchell Silberberg & Knupp, Wash. D.C.
Canada:
Speakers: Prof. Daniel Gervais, Acting Dean of Common law, University of Ottawa
Recent Developments in Canadian Case Law
Justice William Vancise, Chairman, Copyright Board of Canada
What are “adequate reasons” in a Decision of the Canadian Copyright Board? To what Degree Should Appellate Courts Defer to the Expertise of Specialized Tribunals? And Do They?
An examination of the confusion created by courts interfering with a decision of the Copyright Board on the grounds of unreasonableness or procedural fairness, and whether there is an obligation to explain how the Board arrived at the decision made within its sphere of expertise. A judicial tendency may arise to use procedural fairness to obviate the deference owed to statutory tribunals in the same way courts used jurisdiction to permit them to set aside decisions they did not agree with in the 70's and 80's. This coupled with a lessening of the deference owed by courts to decisions of tribunals by abolishing the “patently unreasonable” standard and substituting the reasonableness standard has the potential to lessen the independence of these statutory decision makers and permit unnecessary meddling by the courts.
Steven J. Metalitz, Mitchell Silberberg & Knupp LLP, Wash. D.C.,
Why Canada should be put on the Special 301 Priority Watch List for 2008.
Howard Knopf, Counsel, Macera & Jarzyna LLP, Ottawa,
How Canadian Copyright Law is already Stronger and Better than U.S. Law, and Why the U.S. Should Look in the Mirror Rather than at its “Special 301” Watch List
Panelist: Richard Pfohl, General Counsel, Canadian Recording Industry Ass’n, Toronto
Australia
Speaker: Prof. Anne Fitzgerald, Queensland University of Technology Law School, Brisbane
Recent Developments
New Zealand
Speaker: Prof. Susy Frankel, Victoria University of Wellington, New Zealand
Recent developments: Including why the Digital Copyright Bill 2006 is unlikely to become law and summary of the “Parallel Importing Review: Impact on creative industries.”
Panelists: Prof. Peter Black, Queensland University of Technology Law School, Brisbane Prof. Robert Burrell, University of Queensland, Brisbane
10:55-- 11:20 Break
11:20 – 1:15 The Challenges and Opportunities of Copyright in the Web 2.0 World
Moderator:
Morton David Goldberg, Cowan, Liebowitz & Latman, P.C.
What are the opportunities and challenges for copyright owners in the Web 2.0 world? How are ad-funded business models affecting the economics of content creation and online distribution? What is the effect of the emergence of user generated sites that are sharing revenue with the creator? What role do Creative Commons licenses play? To what extent are online intermediaries responsible for the infringing activities of their users? Where do the U.S. and EU rules overlap on these issues, and where do they diverge?
Speakers: Marty Hansen, Covington & Burling, Wash. D.C.
Web 2.0: A Brief Overview of Issues and Challenges
Prof. Brian Fitzgerald, Queensland University of Technology Law School, Brisbane
Web 2.0: Creator Utopia, Platform Owners Paradise or Still the Same?
Will new music and content distribution models that have been employed in the Web 2.0 environment provide new opportunities for creators or other stakeholders?
Alexander Macgillivray, Intellectual Property and Product Counsel, Google, Inc., Mountain View
YouTube's Content Identification Systems and the new licensing models they enable.
Donald B. Verrilli, Jr., Jenner & Block, Wash. D.C.
Panelists:
Prof. R. Anthony Reese, New York University School of Law (visiting) Thomas C. Rubin, Associate General Counsel, Microsoft Corp., Redmond Prof. Mary Wong, Franklin Pierce Law Center
1:15 – 2:30 Lunch (Platt Atrium and Faculty Reading Room 430)