2010-An Internet and IP Odyssey: Navigating Bold New Challenges Along the Journey

Intellectual Property Law Section - 2010 Annual Meeting Program

7.0 MCLE Credits:  6.0 Professional Practice – 1.0 Ethics

Part 1

Welcoming Remarks
Joyce L. Creidy, Esq., Intellectual Property Law Section Chair
Chehrazade Chemchan, Esq. and Michael A. Oropallo, Esq., Program Co-Chairs

Copyright and Fair Use: Is All Fair in Comedy and Politics?
The fair use defense to copyright infringement liability has always required complex and fact-specific analysis. As the courts have interpreted and applied Judge Leval’s ground breaking concept of transformative use, the outcome of a fair use defense has become increasingly difficult to predict. Cases involving humorous and political content often test the boundaries of fair use. Are such works treated differently by courts, and if so, should they be? A panel of prominent copyright practitioners will discuss developments in the evolution of fair use, using examples of recent cases involving comedy and politics to illustrate the challenges practitioners face advising clients on this important legal doctrine.

Moderator: Paul M. Fakler, Esq., Moses & Singer LLP, New York City
Panelists: Oren J. Warshavsky, Esq., Baker & Hostetler LLP, New York City, Roger L. Zissu, Esq., Fross Zelnick Lehrman & Zissu, P.C., New York City


Part 2

Creative Enforcement of Intellectual Property Rights: Vicarious and Contributory Liability Against Service Providers of Trademark and Copyright Infringers
More and more, trademark and copyright proprietors are taking action against landlords, shippers, Internet Service Providers, Internet auction and advertising sites, social networking websites, credit card companies, and other service providers to stop counterfeiters and infringers from using these services, especially over the Internet. Courts within the United Stateshave addressed these actions in a series of recent cases which impact enforceability of copyright and trademark rights. The panel will discuss the current legal standards and explore best practices and tips on how to tackle such cases, as well as how courts in other jurisdictions have addressed these issues.

Moderator: Mark I. Peroff, Esq., Hiscock  &  Barclay, New YorkCity
Panelists: Davide Bresner, Esq., Rapisardi Intellectual Property, Milan, Italy
Brian W. Brokate, Gibney, Anthony & Flaherty, LLP, New York City
Theodore C. Max, Esq., Sheppard Mullin Richter & Hampton LLP, New York City

Part 3

Ethics Update 2009—A Year in Transition
With the adoption by New York of a revised Rules of Professional Responsibility (replacing the Code of Professional Responsibility), the panel reviews three areas in which ethical considerations may arise: 1) The permissible limits in use of a private investigator; 2) Conflicts arising out of a trademark search and 3) An attorney’s obligation to report an infirmity in a client’s rights: licensing negotiations; assertion of client’s rights in an adversarial setting; and in litigation.

Moderator: Philip Furgang, Esq., Furgang & Adwar, LLP, New York City
Panelists: Jeanne Hamburg, Esq., Norris McLaughlin & Marcus P.A., New York City, William Thomashower, Esq., Schwartz and Thomashower LLP, New York City

Part 4

Survey of Federal Circuit and U.S.Supreme Court Patent Cases
The federal courts continue to shift many paradigms of patent law and litigation. This distinguished panel will take you on a journey through recent cases and developments, and provide some insight regarding yet-to-be decided issues and cases.

Moderator: Mary Ann Ball, Esq., Fulbright & Jaworski LLP, New York City
Panelists: Susan E. Farley, Esq., Heslin Rothenberg Farley & Mesiti, PC, Albany, Douglas J. Nash, Esq., Hiscock & Barclay LLP, Syracuse

Remarks by The New YorkBar Foundation


Part 5

Going International With A Tight Budget - How Do Brand Owners Do This
During these challenging economic times, both in-house and outside counsel are encouraged to partner together to find effective solutions to manage an international trademark portfolio. Being partners requires open and honest dialogue about the type of challenges faced and how they can be overcome. This panel discussion will focus on some of the strategic, legal and ethical issues that are faced by in-house and outside counsels when managing an international trademark portfolio.

Moderator: Sheila Francis Jeyathurai, Esq., Rouse, New York City
Panelists: Sujata Chaudhri, Esq., Cowan, Liebowitz & Latman, P.C., New York City, Lauren A. Dienes-Middlen, Esq., World Wrestling Entertainment, Inc., Stamford, CT, Olga M. Nedeltscheff Esq., Limited Brands Inc., New York City

Part 6

Expert Witnesses—Hiring and Disclosing An Expert That Will   Withstand A Preclusion Attack
The selection, disclosure of opinions, and Daubert challenges to experts in Intellectual Property cases has hit a fever pitch. This panel will provide insight, practice pointers and a “view from the bench”, on this timely topic.

Moderator: Honorable David E. Peebles, U. S. Magistrate Judge, Northern District of New York, Syracuse
Panelists: Leonard A. Feiwus, Esq., Kasowitz, Benson, Torres & Friedman, LLP, New York City, Basil Imburgia, Esq., FTI Consulting, Inc., New York City

Part 7

When, Why And How To Bring Criminal Actions Against Trademark Counterfeiters?
Trademark counterfeiting is a crime and when appropriate, brand owners work with the U.S.government to build successful criminal cases against counterfeiters, in addition or in place of civil measures. The panel will explore with representatives from the U.S.government and the pharmaceutical and certification industries:
• when a case is appropriate for criminal prosecution
• why a company should bring cases to prosecutors attention and
• how to put a successful criminal case together

Moderator: Jessica Parise, Esq., Fulbright & Jaworski LLP, New York City
Panelists: Brian Donnelly Esq., Pfizer, Inc., New London, CT
Brian H. Monks, Esq., Underwriters Laboratories Inc., Melville
Tyler Newby, Esq., U. S. Department of Justice, Washington, D.C.

Annual Law Student Writing Competition

Closing Remarks
Joyce L. Creidy, Esq., Section Chair
Chehrazade Chemcham, Esq. and Michael A. Oropallo, Esq., Program Co-Chairs

This program was recorded on January 26, 2010 at the New York State Bar Asssociation's Annual Meeting.

This archived webcast is a video online program that you will view and listen to on your computer screen. The program code for each topic that you write on the included MCLE Form only appears on the screen and is not announced by audio.