ADVANCED LICENSING AGREEMENTS 2018

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ADVANCED LICENSING AGREEMENTS 2018 AN OVERVIEW OF CRITICAL DEVELOPMENTS IN LICENSING SPECIAL FEATURES Breakout sessions to meet your practice needs Earn one hour of Ethics credit San Francisco

1 ADVANCED LICENSING AGREEMENTS 2018 AN OVERVIEW OF CRITICAL DEVELOPMENTS IN LICENSING SPECIAL FEATURES Breakout sessions to meet your practice needs Earn one hour of Ethics credit San Francisco January New York & Live Webcast March 5-6 Atlanta, Mechanicsburg, New Brunswick, Philadelphia and Pittsburgh March 5-6 May Credit Available: CLE, CPD and IAPP Privacy CPE REGISTER TODAY

Advanced Licensing Agreements 2018 INTELLECTUAL PROPERTY LICENSING continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.

2 Advanced Licensing Agreements 2018 INTELLECTUAL PROPERTY LICENSING continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving. Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to expand or create market opportunities, develop technology, or generate returns from existing assets, managing licensing transactions requires a broad and varied toolkit. Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction. This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. TOPICS INCLUDE Best practices for patent and technology licensing Pointers for strategic alliances and other joint development agreements Advanced considerations in copyright, content, and trademark licensing Impact of digital distribution and media on licensing issues Software licensing: representations, warranties and indemnification Ethical considerations in licensing Drafting to account for litigation risks Recent developments in legal enforceability of open source licenses Special contract issues raised by cloud computing Issues surrounding the licensing of Big Data Addressing international licensing issues Mastering effective negotiation strategies

3 Advanced Licensing Agreements 2018 AGENDA DAY 1 A networking breakfast will be available each day upon your arrival. Morning Session: 9:00 OPENING REMARKS AND INTRODUCTION Marcelo Halpern, Ira Jay Levy, Joseph Yang 9:15 PATENT AND TECHNOLOGY LICENSING Avoiding frequently made mistakes Comparing technology, IP, and blended licenses Why patent licensing is different Understanding grant types and degrees of exclusivity Indemnification and change of control issues Negotiation strategies Licensee and licensor perspectives Joseph Yang 10:15 COPYRIGHT, CONTENT AND TRADEMARK LICENSING Impact of digital distribution and media on licensing issues Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire The latest developments: copyright termination of transfers and licenses Preexisting content vs. newly created content Licensing for social media and user-generated content Analysis of key contract issues and negotiating points in content licenses Quality control considerations Advanced considerations in trademark and brand licensing Review sample licensing provisions Case law update and licensing implications Implementing a brand licensing program SF: Tiki Dare, Kenneth M. Kaufman Oliver Herzfeld, Kenneth M. Kaufman CHI: Kenneth M. Kaufman, Paula Jill Krasny 11:30 Networking Break 11:45 SOFTWARE LICENSING Source code issues Representations, warranties and (the dreaded) indemnification Revenue sharing and auditing Software specifications: should you care? Yes! Training and support What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed Keeping the relationship on track Regulatory compliance Mark S. Holmes 12:45 Lunch Afternoon Session: 1:45 BREAKOUT SESSION NO. 1A ANALYSIS OF A CONTENT LICENSE AGREEMENT Walkthrough and mock negotiation of a complex content license agreement Structuring IP rights allocation Negotiating new media rights Avoiding pitfalls in allocating merchandising rights How to negotiate creative, business and technology control issues Considerations in funding and royalty sharing Interplay of technology and content issues for digital content SF: Thi Do, Kenneth M. Kaufman, NY: Kenneth M. Kaufman, Tucker McCrady, Jonathan Sirota CHI: Kenneth M. Kaufman, Jessica L. Rothstein, BREAKOUT SESSION NO. 1B ANALYSIS OF A TECHNOLOGY LICENSE AGREEMENT Walkthrough of key technology license provisions Avoiding common pitfalls How to address confidentiality and trade secret issues Exclusivity Restricted fields of use Specifications Analysis of warranties and indemnification SF: Mark S. Holmes, Marc P. Schuyler, Gillian Thackray Melvin C. Garner, Mark S. Holmes, Gail H. Zarick CHI: Mark S. Holmes, Lars S. Johnson, Debbie K. Wright 2:45 BREAKOUT SESSION NO. 2A LICENSING ISSUES IN THE LIFE SCIENCES INDUSTRY Topics will vary by city, and may include: How to transition pharmaceutical products/programs Monetary considerations (e.g., royalties, product returns, etc.) IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions) Comparison of clinical stage vs. commercialized products Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals) Deal structures and governance Research plan Due diligence SF: Christina Carlson, Marya Postner NY: Scott J. Catlin, Lauren Rabinovic, Jennifer S. Yoon CHI: Marya Postner, Catherine A. Sazdanoff BREAKOUT SESSION NO. 2B RIGHTS OF PUBLICITY LICENSING Natural vs. statutory rights Lifetime vs. postmortem rights Rights of publicity in identifiable objects symbolizing a persona Rights of publicity releases Liability for violating a right of publicity Differences compared to copyrights and rights of privacy 3:45 Networking Break 4:00 ETHICAL CONSIDERATIONS IN LICENSING What happens when a friendly deal turns litigious Deceit and candor Cross-border transactions Communications with adverse parties SF & CHI: Ira Jay Levy David Rabinowitz 5:00 Adjourn

Advanced Licensing Agreements 2018 AGENDA DAY 2 Morning Session: 9:00 PARTY DISPUTES Litigation and Case Law Update for Licensing Lawyers Strategic drafting considerations to account for litigation

4 Advanced Licensing Agreements 2018 AGENDA DAY 2 Morning Session: 9:00 PARTY DISPUTES Litigation and Case Law Update for Licensing Lawyers Strategic drafting considerations to account for litigation risks Pitfalls, and examples, of sloppy wording Impact of recent cases on drafting and negotiating Arbitration and other dispute resolution considerations Case law update Ira Jay Levy INDEMNIFICATION Topics will vary by city, and may include: Analyze overlaps/differences between R&W and indemnification Is hold harmless broader than indemnify? How patent guarantees are riskier than non-patent guarantees Carve-outs (e.g., modifications, combinations or decisions by the licensee) What if the deliverable is intended for incorporation into a larger system? What if the deliverable is intended to be further modified? What if the deliverable is a design but the licensee makes the implementation choices? Comparing tradeoffs vs. liability caps Managing litigation handoff when liability cap is exceeded SF: Terence N. Church Eleanor M. Yost CHI: Themi Anagnos 10:30 Networking Break 10:45 OPEN SOURCE, CLOUD COMPUTING, BIG DATA OPEN SOURCE ISSUES Comparing and understanding popular open source licenses Current developments in open source licensing law Open source compliance strategies SF: Christian H. Nadan Paul H. Arne CHI: David G. Rickerby CLOUD COMPUTING What is cloud computing? Comparing SaaS, PaaS, and IaaS Overview of cloud computing legal issues Review special contract issues raised by cloud computing arrangements Peter J. Kinsella LICENSING OF BIG DATA Key license provisions Ownership of data Regulatory compliance Indemnification issues Data privacy Breach remedies Termination provisions SF: David Tollen NY, CHI, ATL, MECH, NB, PHI, PITT & WEB: Raymond R. Ferrell 12:15 Lunch Afternoon Session: 1:15 STRATEGIC ALLIANCES AND OTHER JOINT DEVELOPMENT AGREEMENTS IP creation conflicts: default laws vs. parties intentions IP allocation: joint ownership vs. field-based ownership vs. separate entity IP enforcement: contractual provisions; unauthorized licensees; joinder requirements IP deallocation: facilitating or inhibiting separation; bankruptcy Interplay with IP asset management Corporate vs. university partners War stories from real-life deals Joseph Yang 2:15 INTERNATIONAL LICENSING Similarities and differences between U.S., European and Asian licensing Common pitfalls for U.S. lawyers doing foreign deals Local law issues Cultural issues Additional topics will vary by city, and may include: Differences in types of IP rights License grant provisions Foreign partnership issues Grantback rights issues Economic considerations Governmental approvals Registration requirements Antitrust/competition law overlays Dispute resolution SF: Laura Berton, James Maccoun Grace L. Pan, Jeremy Schrire CHI: Gordon Drakes, Robert Ranucci 3:45 Networking Break 4:00 NEGOTIATION SKILLS AND TACTICS How to prepare for license negotiations How to use psychological tools as part of your negotiation strategy Consensus and bridge building Differences between integrative ( win-win ) and positional bargaining, and when to use each Marcelo Halpern 5:00 Adjourn UP-TO-THE-MINUTE EXPERTISE: PLI ONE-HOUR AUDIO BRIEFINGS More than 135 Briefings a year on topics ripped straight from the headlines and sent straight to your Inbox on Sundays. For a complete list of Audio Briefings, service questions, or to subscribe, visit:

FACULTY Program Attorney: Justin Capuano CO-CHAIRS Marcelo Halpern Perkins Coie LLP SAN FRANCISCO January 23-24 Laura Berton Fieldfisher Silicon Valley, CA Christina Carlson Senior Corporate Counsel

Church & Associates San Ramon, CA Tiki Dare Assistant General Counsel Oracle Corporation Redwood City, CA Thi Do Senior Legal Director Yahoo Holdings, Inc. Playa Vista, CA Mark S.

5 FACULTY Program Attorney: Justin Capuano CO-CHAIRS Marcelo Halpern Perkins Coie LLP SAN FRANCISCO January Laura Berton Fieldfisher Silicon Valley, CA Christina Carlson Senior Corporate Counsel Gilead Sciences Foster City, CA Terence N. Church Law Office of Terence N. Church & Associates San Ramon, CA Tiki Dare Assistant General Counsel Oracle Corporation Redwood City, CA Thi Do Senior Legal Director Yahoo Holdings, Inc. Playa Vista, CA Mark S. Holmes CEO PatentBridge LLC Menlo Park, CA Kenneth M. Kaufman Manatt, Phelps & Philips, LLP Washington, DC Peter J. Kinsella Perkins Coie LLP Denver James Maccoun Patent Counsel Google Inc. Mountain View, CA Christian H. Nadan SVP, General Counsel & Corporate Security Actian Corporation Palo Alto Ira Jay Levy Goodwin Procter LLP Joseph Yang PatentEsque Law Group, LLP Menlo Park, CA NEW YORK, GROUPCAST LOCATIONS & LIVE WEBCAST March 5-6 Paul H. Arne Morris, Manning & Martin, LLP Atlanta Scott J. Catlin Associate Vice President for Technology Ventures University of Rochester Rochester, NY Raymond R. Ferrell Executive Vice President, General Counsel & Corporate Secretary DexYP Dallas Melvin C. Garner Leason Ellis LLP White Plains, NY Oliver Herzfeld Senior Vice President & Chief Legal Officer Beanstalk Mark S. Holmes CEO PatentBridge LLC Menlo Park, CA Kenneth M. Kaufman Manatt, Phelps & Philips, LLP Washington, DC Peter J. Kinsella Perkins Coie LLP Denver Tucker McCrady Executive Vice President & General Counsel The Orchard Grace L. Pan Holland & Knight LLP Lauren Rabinovic Vice President and General Counsel, North Americas Generic IP Teva Pharmaceuticals USA Horsham, PA CHICAGO May Themi Anagnos Deputy General Counsel, Director of Intellectual Property for the Americas Continental Automotive Deer Park, IL Gordon Drakes Fieldfisher London Raymond R. Ferrell Executive Vice President, General Counsel & Corporate Secretary DexYP Dallas Mark S. Holmes CEO PatentBridge LLC Menlo Park, CA Lars S. Johnson Senior Counsel Global Operations, EHS Compliance, and IP Counsel for R&D Nutrition PepsiCo, Inc. Kenneth M. Kaufman Manatt, Phelps & Philips, LLP Washington, DC Peter J. Kinsella Perkins Coie LLP Denver Paula Jill Krasny Culhane Meadows PLLC Marya Postner Cooley LLP Palo Alto Robert Ranucci Vice President and General Counsel Christie Digital Systems USA, Inc. Cypress, CA

6 Advanced Licensing Agreements 2018 Marya Postner Cooley LLP Palo Alto Marc P. Schuyler Law Office of Marc P. Schuyler Saratoga, CA Gillian Thackray Vice President, Associate General Counsel and Chief Intellectual Property Counsel The Clorox Company Oakland, CA David Tollen Sycamore Legal, PC San Francisco Greenberg Traurig, LLP Las Vegas David Rabinowitz Moses & Singer LLP Jeremy Schrire Keystone Law London Jonathan Sirota Sirota Law Firm, P.C. Greenberg Traurig, LLP Las Vegas Jennifer S. Yoon Weil Gotshal & Manges LLP Eleanor M. Yost Carlton Fields Jorden Burt LLP Tampa, FL Gail H. Zarick IP Counsel, Security Division IBM Corporation Armonk, NY REGISTRATION When registering over the phone or online, please refer to Priority Code RBC8 Attend for FREE San Francisco Program # January $1,895 at PLI California Center New York Program # March 5-6 $1,895 at PLI New York Center Atlanta Groupcast # March 5-6 $1,895 at Atlanta Bar Association Mechanicsburg Groupcast # March 5-6 $1,895 at Pennsylvania Bar Institute New Brunswick Groupcast # March 5-6 $1,895 at New Jersey Institute for Continuing Legal Education Philadelphia Groupcast # March 5-6 $1,895 at Pennsylvania Bar Institute Pittsburgh Groupcast # March 5-6 $1,895 at PBI Professional Development Conference Center or Live Webcast # March 5-6 $1,895 Program # May $1,895 at University of Gleacher Center Course Handbook only # $220 ADDITIONAL PROGRAMS Save the Date Open Source Software 2017 From Compliance to Cooperation San Francisco & Live Webcast December 20, 2017 Advanced Copyright Law 2018: Current Issues New York & Live Webcast March 15, 2018 For a complete list of PLI offerings, visit David G. Rickerby Boston Technology Law, PLLC Cambridge, MA Jessica L. Rothstein Goodwin Procter LLP Catherine A. Sazdanoff Chief Business Officer Strata Oncology, Inc. Lake Forest, IL Greenberg Traurig, LLP Las Vegas Debbie K. Wright Former Chief Counsel Technology Transactions Kraft Foods (Retired) SCHOLARSHIPS & PRO BONO INITIATIVES As a nonprofit organization, PLI is deeply committed to the public service work of the legal profession. This commitment extends to training in-house and private practice attorneys in support of their pro bono activities, as well as training attorneys working in legal services, nonprofit organizations, and government agencies. PLI s pro bono efforts include: full and partial scholarships to attend our institutes and programs assisting public interest and legal services organizations with their legal training needs, and providing free programs in practice areas critical to the representation of low-income clients. In 2016, PLI awarded over 78,000 scholarships to attorneys working for legal services/nonprofit organizations, judges and judicial law clerks, law professors, unemployed attorneys and attorneys with financial hardships, law students and attorneys 65 or older. PLI also partners with Privileged Member firms and organizations to offer free CLE training to their pro bono clients under the Pro Bono Membership program. The selected nonprofit organizations, legal aid organizations and other pro bono groups have unlimited access to PLI live programs and On-Demand Learning content. For more information on our pro bono initiatives, or to apply for a scholarship, please visit

7 2018 PROGRAM DETAILS LOCATIONS, PAYMENT & CANCELLATION POLICIES, CREDITS, ETC. January SAN FRANCISCO PLI California Center 685 Market Street, Suite 100 San Francisco, CA March 5-6 NEW YORK PLI New York Center 1177 Avenue of the Americas New York, NY ATLANTA BAR ASSOCIATION 400 International Tower 229 Peachtree Street NE Atlanta, GA MECHANICSBURG Pennsylvania Bar Institute 5080 Ritter Rd. Mechanicsburg, PA NEW BRUNSWICK New Jersey Institute for Continuing Legal Education One Constitution Square New Brunswick, NJ PHILADELPHIA Pennsylvania Bar Institute The CLE Conference Center Wanamaker Building, 10th floor, Suite 1010 Center City Philadelphia, PA (Juniper St. entrance, between 13th & Broad Sts., opposite City Hall) PITTSBURGH PBI Professional Development Conference Center 339 Sixth Avenue, Suite 760 Pittsburgh, PA May CHICAGO University of Gleacher Center 450 North Cityfront Plaza Drive, IL PAYMENT POLICY: Registration fees are due in advance. Attendees may pay by check, Visa, MasterCard, American Express or Diners Club. CANCELLATIONS: All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program. CLE/CPD CREDIT: PLI programs offer CLE credit in all U.S. jurisdictions that have mandatory CLE requirements and some foreign jurisdictions with CPD requirements. Please check for credit details, eligibility and approval status for your particular jurisdiction(s). New York: In accordance with the requirements of the Continuing Legal Education Board, this non-transitional continuing legal education course has been approved for a maximum of 15 credit hours, of which 14 credit hours can be applied toward the Professional Practice requirement and 1 credit hour can be applied toward the Ethics requirement. California: This activity is approved for MCLE credit in the amount of hours, of which 1 hour will apply to legal ethics. CONTINUING PROFESSIONAL EDUCATION FOR PRIVACY PROFESSIONALS: This program has been submitted for approval by the International Association of Privacy Professionals (IAPP) for 1.5 CPE credits. SPECIAL NEEDS: If you have special needs as addressed by the Americans with Disabilities Act, please notify Customer Service at least two weeks prior to your program. HOTEL INFORMATION or call REGISTER TODAY REGISTER FOR OUR LIVE WEBCAST ATTEND FROM YOUR LOCATION! Most of our programs are available as live Webcasts. Reserve your seat to watch PLI s acclaimed faculty as they discuss the hottest legal trends, developments, case law and regulations.... View all supporting material.... And earn CLE and CPE credit. Register today at or Call

PLI COURSE HANDBOOKS AVAILABLE ONLINE Our Course Handbooks represent the definitive thinking of the nation s finest legal minds, and are considered the standard reference in the field.

8 PLI COURSE HANDBOOKS AVAILABLE ONLINE Our Course Handbooks represent the definitive thinking of the nation s finest legal minds, and are considered the standard reference in the field. The Handbook is prepared specifically for this program and stands alone as a permanent reference. The Course Handbook will be available online several days prior to the program! Log in to go to My Online Library and click on the Course Materials tab. You can review the material or prepare questions to raise at the program. All attendees will have access to the Course Handbook for one year from the program date. ON-DEMAND THE EASIEST WAY TO COMPLETE YOUR MCLE REQUIREMENT! Over 2,500 hours of web programs, available whenever and wherever you need it. You can view entire programs or individual web segments 24/7, along with downloadable course materials. ADVANCED LICENSING AGREEMENTS 2018 Practising Law Institute 1177 Avenue of the Americas New York, NY NON-PROFIT ORGANIZATION U.S. POSTAGE PAID PRACTISING LAW INSTITUTE Priority Code: RBC8

UNDERSTANDING THE INTELLECTUAL PROPERTY LICENSE 2018

A Nonprofit Learning Organization UNDERSTANDING THE INTELLECTUAL PROPERTY LICENSE 2018 ESSENTIAL INTELLECTUAL PROPERTY LICENSING CONCEPTS November 1-2 New York & Live Webcast November 5-6 Atlanta, Indianapolis,