Around the Edges of IP
Thursday, November 9, 2017
Kramer Levin Naftalis & Frankel LLP
1177 Avenue of the Americas, NYC
8:55 - 5:15 p.m. followed by a Networking Reception Celebrating the Section's 25th Anniversary
7.0 CLE Credits consisting of 5.5 in Areas of Professional Practice and 1.5 in Ethics and Professionalism. This program is transitional and suited for all attorneys including those that are newly admitted.
Presented Live and Webcast
Intellectual property law has become an increasingly specialized area of practice, with lawyers and entire law firms focused solely on specific aspects or forms of IP. Yet as businesses grow, change, and adapt to the rapid globalization of trade, clients are increasingly looking to their IP attorneys to appreciate and consider the impact of decisions made with respect to IP across a variety of legal disciplines.
Appropriate for both new associates and seasoned practitioners, this program will explore the intersection of IP with other areas of law, including tax, bankruptcy, trusts and estates, securitization, and franchising. Our cross-disciplinary panel of speakers will discuss key concepts in non-IP fields that may impact IP practice, facilitate issue spotting, and offer practical advice for considering IP issues in a broader and more holistic context.
SCHEDULE OF EVENTS
8:15-8:50 AM Registration and Continental Breakfast
Sponsored by Kilpatrick Townsend & Stockton
8:55-9:00 AM Welcoming Remarks
9:00-10:00 AM Taxation of Intellectual Property Rights
This panel will explore basic tax considerations related to the acquisition, disposition, and creation of intellectual property from a US federal income tax perspective. Our panel will discuss several basic domestic and international tax planning techniques, including transfer pricing, used in determining transaction structure and where IP assets should be held. A high-level overview of relevant federal corporate income tax concepts will be provided as a foundatio for the panel’s discussion.
Moderator: Matthew Maggiacomo, Associate, Reed Smith LLP
Speakers: Jeffrey S. Korenblatt, Partner, Reed Smith LLP
Beau Sheil, Director, Duff & Phelps
10:00-11:00 AM Complexities of IP in Bankruptcy
This panel will discuss IP license agreements in the context of bankruptcy, including enforceability and the challenges that arise relating to assumption, assignment, or rejection. Our panelists will provide an overview of the Bankruptcy Code sections applicable to IP, discuss the ways in which different forms of IP are treated differently in bankruptcy, and address best practices for drafting license agreements from both a licencor and licensee perspective.
Moderator: William R. Samuels, Partner, Scarinci Hollenbeck
Speakers: Joel R. Glucksman, Partner, Scarinci Hollenbeck
James W. Grudus, Chief Creditors Rights Counsel, AT&T
David M. Posner, Partner, Kilpatrick Townsend & Stockton LLP
11:00-11:15 AM Morning Break
Sponsored by Frankfurt Kurnit Klein & Selz PC
11:15-12:15 PM What IP Practitioners Should Know about Estate Planning and Administration of Intellectual Property and Keeping Competent under the RPC by Understanding the New Digital Assets Laws: Advising Clients and Spotting the Issues
The first half of the presentation we will discuss how to handle estate planning for and the administration of the estates of both the creators and collectors of works of art and written materials, including the valuation and taxation of such assets. The second half will focus on important steps to protect digital assets and digital accounts upon death and inter vivos pursuant to powers of attorney, according to New York’s newly enacted version of the Uniform Fiduciary Access to Digital Assets Act (Article 13-A to the New York Estates Powers and Trust Law), particularly the ethical obligations to understand technology and technology laws, as they relate to this new Act
Moderator: Richard Ravin, Hartman & Winnicki, P.C.
Speaker: Donald Hamburg, Partner, Golenbock Eiseman Assor Bell & Peskoe LLP
12:15-1:15 PM Lunch
1:15-2:15 PM The Business of IP – Monetization and Securitization of IP Assets
For many years IP has proven to be an intangible corporate asset. This panel will explore how to create and derive value from IP outside of the litigation context from securitization to various forms of monetization, including the trading of IP assets.
Moderator: Rory Radding, Partner, Locke Lord LLP
Speakers: Paul Kallmes, Program Manager, The Vault
Jamie Kocis, Partner, Kramer Levin Naftalis & Frankel LLP
Lee Pham, Counsel, Intellectual Property Law & Strategy, General Counsel's Organization, American Express Company
2:15-3:15 PM Who Is My Client and How Do They Know That?: Navigating Conflicts of Interest in IP Transactions
It is always important for lawyers at the outset of any engagement to identify the clients and communicate the scope of the representation. This is especially true where a lawyer is representing a corporate client that may have multiple affiliates or is part of a larger organization. This panel will deal with conflicts of interest in IP transactions and will address issues that relate to lawyers representing IP holding companies, trademark licensees, or multiple parties in a transaction.
Speaker: Tyler Maulsby, Associate, Frankfurt Kurnit Klein & Selz PC
3:15-3:30 PM Afternoon Break
Sponsored by Reed Smith LLP
3:30-5:10 PM To Franchise, or Not To Franchise, That is the Question: What You Need To Know in the US and Latin America About Franchising and Intellectual Property
This panel will identify the differences between franchises and licenses, including advantages and potential pitfalls of each, and provide an overview of U.S. state franchise laws and how they differ from foreign practice. Our international panelists will opine on important considerations for U.S. clients before they decide to franchise in Latin America.
Moderator: Marc Lieberstein, Partner, Kilpatrick Townsend & Stockton LLP
Speakers: Gustavo A. Alcocer, Partner, OLIVARES (Mexico)
Tatiana Campello, Partner, Demarest Advogados (Brazil)
Martha Bonett, Partner, CAVELIER ABOGADOS (Colombia)
5:15-6:30 PM Networking Reception
Sponsored by CompuMark Clarivate Analytics
REGISTRATION FEES FOR IN PERSON AND WEBCAST:
Section member: $150.00
NYSBA Member: $180.00
Non-NYSBA Member: $235.00
Law Student Member: $50.00
In-Person Registration Fees Include: MCLE programming, Materials, Continental Breakfast, Refreshment breaks, Lunch and Networking Reception.
Not a member of the Intellectual Property Law Section? Dues are only $30 per year with NYSBA membership. Join today to save on this program! (Join online or call the Member Resource Center 1-800-582-2452, M-F, 8:00am-5:00pm)
For further information, please contact Kristina Maldonado at firstname.lastname@example.org