Trademark & Copyright Strategies for the Digital Age
A company’s trademarks and copyrights are some of its most important – and public-facing – assets. While the digital age of e-commerce, mobile advertising and social media can connect a brand or product directly to consumers, it also breeds piracy and counterfeiting. This means lost sales and eroded brand equity.
Today’s trademark and copyright professional needs to constantly stay one step ahead with a strong brand and content protection strategy.
How can companies fight back and mitigate counterfeiting? What are the best anti-piracy and content protection strategies? When does it make sense to litigate?
The TM&C summit brings together thought leaders to uncover the challenges and opportunities of an effective strategy.
CLE Approved! 6 hrs. NY State (5 hrs. regular + 1hr. ethics)
KEY TOPICS DISCUSSED
The Decision: Balancing Trademark Enforcement & Business Cost
Trademark Strategy: From Social to Mobile
Copyright Enforcement 2017: From Web to Mobile & Beyond
The Changing Landscape of Remedies Under the Lanham Act
Ethical Issues for In-House IP Counsel
Senior Counsel, Trademarks
VP & Director of IP Strategy
Chief, Deputy and Associate General Counsel
Intellectual Property, Trademark and Copyright Counsel
Head of Litigation
Director of Licensing
Senior Copyright Counsel
Director/VP of Licensing
Vice President of Brand Licensing
Jennifer Chung is an Assistant General Counsel at Time Inc. where she manages the company’s global intellectual property portfolio. Previously, she was an Assistant General Counsel at the New York State Department of Economic Development, where she worked on a variety of the state’s economic development programs to bring and keep businesses in New York state, and assisted in the management of the I LOVE NEW YORK family of trademarks and service marks, used to brand NY’s premier tourism and marketing program. Prior to the NYS DED, she spent almost eight years working on a variety of high-level intellectual property litigation matters, and also had a tenure as an Assistant District Attorney in New York County (Manhattan) handling criminal appeals on behalf of the State. She was a law clerk to the Honorable Gabriel Gorenstein, District Court Magistrate Judge, Southern District of NY. She graduated with a B.A. from Cornell University and a J.D., cum laude, from Albany Law School and is licensed to practice law in New York State.
Tracy is the Senior Counsel, Intellectual Property, for NRG Energy, Inc., a Fortune 200 company and the leading integrated power company in the U.S. As the sole intellectual property attorney for the company and all of its subsidiaries, Tracy’s practice focuses on preparing and negotiating various strategic partnership and intellectual property agreements, including licenses, website terms and conditions and end user license agreements, master services agreements, joint marketing agreements, joint development agreements, naming rights agreements and talent endorsement agreements. In addition, Tracy reviews all marketing materials, contest and sweepstakes rules and website content prior to its use outside of the organization and manages the company’s worldwide trademark and patent dockets, disputes and oppositions. Tracy’s role also includes advising the company with respect to brand strategy, ever-evolving social media issues and the navigation of risk in the pursuit of the company’s goals and objectives.
She joined the company in June of 2013 after spending the first five years of her career with Norton Rose Fulbright (formerly Fulbright & Jaworski), where she worked as an Associate on the Intellectual Property & Technology team. As part of that team, Tracy completed two secondments, one of which took her to London, England, for three months supporting Yell Group (the Yellow Pages) in its development of an online marketplace, and another in the healthcare industry in Houston, Texas.
Sondra is an experienced intellectual property attorney for a Fortune 500 company with global sales of over $15 billion, with additional experience at other multi-national corporations and in a large firm. Successful at collaborating with business teams on adopting and implementing trademark strategy on global and regional basis, trademark clearance, protection, defense, enforcement, and licensing, copyright, and rights of publicity. She currently serves as Assistant General Counsel, trademarks at Monsanto. Previously she has held IP counsel positions at Anheuser-busch and Energizer. Sondra earned her J.D from Saint Louis University School of Law and her BA from Southern Illinois University.
Michael Sparling is Vice President and Assistant General Counsel of 1-800-FLOWERS.COM, INC., the world’s largest florist and gift shop. His areas of responsibility also include 1) the management of the Company’s intellectual property spread across 30 brands and encompassing 5000+ domain names, 300+ foreign and domestic trademarks and 100+ copyrights and patents; 2) the drafting and revision of a broad spectrum of corporate transactional agreements (promotional, marketing, corporate service, IT, vendor services and assorted others); 3) trademark litigation; and 4) the research and strategic acquisition of valuable intellectual property.
Deborah is Associate General Counsel/Assistant Secretary for Caleres, Inc. (formerly known as Brown Shoe Company, Inc.). She has worked almost exclusively in-house, for St. Louis companies, including Anheuser-Busch. Deborah is a 1987 graduate of Washington University Law School, and is currently an adjunct professor at the school teaching Trademark Practice.
She is licensed in Missouri, however her work is international.
Howard is a chair of the firm's Trademark Practice Group. With nearly 20 years experience in intellectual property law, Howard has helped protect trademarks, copyrights, advertising and trade secrets for many of the world’s largest companies. A seasoned courtroom veteran who also provides transactional and prosecution counseling, he represents clients in a wide range of industries including social media, Internet search, finance, aerospace, pharmaceuticals, robotics, alternative energy, food and beverage, steel, waste disposal, and numerous home and consumer goods.
Howard has a particular focus on high-stakes, fast-moving trademark counterfeiting matters. He works closely with U.S. Customs and Border Protection and the U.S. Marshals Service to stop counterfeit goods from entering the country, obtains injunctive relief and coordinates the ex parte seizures of such goods where possible.
His many other cases involve virtually every area of intellectual property—including trademark, copyright and patent infringement, false advertising, unfair competition, trademark dilution and abandonment, and trade dress. He appears regularly in federal court and before the Trademark Trial and Appeal Board. He also is asked to regularly speak on topical trademark issues.
Clients often look to Howard for advice on worldwide trademark and technology licensing. Applying a litigation perspective, he is able to think forward to identify and avoid potential pitfalls and areas of controversy.
Suzanne Telsey is an Associate General Counsel at McGraw-Hill Education (formerly The McGraw-Hill Companies), where she has worked since September 2000. Suzanne handles a variety of intellectual property matters for all the Company’s units, including copyright, trademark, piracy, libel, First Amendment and related litigation matters. Before joining McGraw-Hill, Suzanne was VP and General Counsel of DeAgostini Atlas Editions, U.S.A., Inc. (formerly P.F. Collier and Newfield Publications), a publisher and distributor of books, encyclopedias and other digital products. Before that, she was Associate General Counsel at Bantam Doubleday Dell Publishing Group, Inc. (now Random House), handling a variety of publishing-related legal matters. Before that, Suzanne was a litigation associate with the NY law firm Kramer, Levin, Naftalis & Frankel. She began her legal career as a law clerk to then U.S. District Court Judge Pierre N. Leval, who currently sits on the Second Circuit Court of Appeals. Suzanne graduated from Brown University with an A.B. degree in Classics and Comparative Literature and received a J.D. degree (with honors) from New York University School of Law, where she was an editor of the Law Review and elected to the Order of the Coif. Over the years, she has sat on numerous City and State Bar Committees, including the Communications and Media Law and the Copyright Committees of the Association of the Bar of the City of NY and the AAP Freedom to Read Committee, and is currently a member of the AAP Copyright Committee. She is a member of the New York State Bar.
David Green is Assistant General Counsel in Microsoft's IP Policy group, helping Microsoft define and execute its global copyright and related IP strategy. Dave has counseled extensively on a range of complex IP matters and litigation impacting Microsoft's products and services, including the launch of Xbox One, Xbox Music, Groove, and Windows 7/8/8.1.
Previously, as AGC for Bill Gates's Corbis Corp, Dave handled its legal and business affairs. He launched its successful antipiracy program, and its GreenLight Rights and entertainment division. He developed successful licensing and business ventures with Marvel, Sony, Hallmark, MGM, Playboy, Universal, and Fox, and was production counsel on several critically praised films and TV specials.
Dave began his legal career as Assistant Attorney General to the University of WA, advising on complex IP and licensing, privacy, tech transfer, and business matters.
Dave has deep experience in copyright, technology, brand licensing, trade secrets, joint IP ventures, entertainment transactions involving digital media, talent, films, and promotions, acquisitions of media, rights, and technology companies, and intellectual property strategies relevant to online services, software, and technology. He has co-authored and testified on IP legislation
Dave speaks frequently on IP matters, entertainment and licensing, and licensing strategies. He is a past Trustee of the US Copyright Society , and co-chaired the ABA's New Media & Innovation committee. He serves as Board Member for the UW Program in IP Management and Business Development, and has taught its IP Management course.
Apart from Microsoft, Dave co-founded McQueen Racing LLC (with the iconic Steve McQueen family), launching projects with Porsche Design,Triumph, and Troy Lee Designs. Dave is executive producer for the award winning films"I am Steve McQueen" (debut on Spike TV) and The Man & Le Mans (selected for prestigious Cannes Classic film festival).
Delphine Knight Brown is a litigator whose practice focuses on complex intellectual property and technology cases. Her patent litigation experience, including Hatch-Waxman cases for several generic pharmaceutical companies, has involved pharmaceutical, medical device, computer software and hardware, and business method patents as well as misappropriation of trade secret claims and unfair competition matters. Delphine also handles complex copyright and trademark infringement and licensing matters.
Paul Anderson is Associate General Counsel, Intellectual Property and Commercial Counsel at Forbes Media LLC. In this role, Paul helps the Forbes business and editorial teams timely accomplish their goals while identifying and addressing potential issues that may arise. Among other things, this typically involves negotiating a variety of agreements in connection with the company’s extensive commercial activities (e.g., licensing; marketing; technology; events and live performances; public relations; sales/advertising; social media; website and mobile app; sweepstakes and contests), providing best practice guidance on existing agreements and current/planned activities, and advising on various strategic, business, and operational matters. Paul is also responsible for managing and enforcing the company’s large portfolio of intellectual property assets across the world and protecting the Forbes brand from third party abuse, infringement, and tarnishment. Last October, while providing legal counsel for the Forbes Under 30 Summit in Boston, MA, Paul was responsible for the production of a music festival headlined by Jason DeRulo and Halsey, a pitch competition hosted by Ashton Kutcher and Guy Oseary, and a morning run along the Charles River with Michael Phelps and approximately 800 participants.
Susan is the Intellectual Property and Brand Counsel for Edible Arrangements International, LLC, the largest franchiser or fresh fruit gift products with over 1200 independently owned and operated franchise locations in North America. Over the past 20 years she has managed large and small international trademark portfolios including some of the most well-known brands such as Sunbeam®, Coleman®, Lycra® and Edible Arrangements®. Susan has provided legal counsel to both large and small companies to assist their development and implementation of IP strategies to achieve business objectives associated with intellectual property related to IP portfolio management, IP enforcement, mergers and acquisitions, trademark licensing and advertising.
Miri is Associate General Counsel, Americas at Dentsu Aegis Network, a leading, global media, advertising and digital communications group. Miri is responsible for advising DAN’s media and specialist agencies throughout the region in their work handling digital creative execution, media planning and buying, brand tracking and marketing analytics for clients. Prior to joining DAN, Miri oversaw legal support for the Activision Publishing Minneapolis business unit of Activision Blizzard in connection with the development, publication, marketing and distribution of bestselling video games. Miri was also formerly Associate General Counsel at The Beanstalk Group in New York, which develops and manages turn-key, strategic global licensing programs on behalf of owners of famous brands and trademarks. Miri, a New Yorker, holds degrees from New York University and Brooklyn Law School, and is admitted to the bars of New York and Minnesota.
Jeremy N. Gayed focuses his practice on patent litigation, licensing, and prosecution, as well as trademark services and general intellectual property and commercial litigation. Mr. Gayed handles a broad variety of patent, copyright, trademark, trade secret, unfair competition, breach of contract, and ERISA litigation matters.
Mr. Gayed is a member of the Allen County Bar Association and the Indiana State Bar Association. He is licensed to practice in Indiana, Illinois, and before the U.S. Patent and Trademark Office. Additionally, he is a member of the bars of the U.S. Supreme Court, the Supreme Court of Indiana, the Supreme Court of Illinois, the U.S. Patent and Trademark Office, the Seventh Circuit Court of Appeals, and federal district courts for the Northern District of Indiana, Southern District of Indiana, Northern District of Illinois, and Western District of Michigan. Mr. Gayed regularly teaches continuing legal education classes on various intellectual property-related topics.
Prior to joining Barrett in 2008, Mr. Gayed served as a law clerk for the Honorable William S. Duffey Jr. in the federal district court for the Northern District of Georgia and as an associate in Chicago-based intellectual-property boutique McAndrews, Held & Malloy. Mr. Gayed earned his J.D., magna cum laude, from Notre Dame Law School in 2004. He holds undergraduate degrees in chemistry and political science from Wheaton College.
Mr. Gayed is rated by Martindale-Hubbell as AV® Preeminent™. He was featured as a "Rising Star" in 2014 by Indiana Super Lawyers® and was named one of the "Top Lawyers in Fort Wayne" by Fort Wayne Magazine in 2013 and 2014.
Ms. Walker is currently Associate General Intellectual Property Counsel at Xerox Corporation where she specializes in trademark and copyright law. Before taking the position at Xerox, she worked as an Associate at Nixon Peabody LLP. Ms. Walker holds a J.D. from University of Michigan Law School and a B.A. in Political Science from University of Rochester.
Dr. Shaila Vaidya received her Ph. D. in organic chemistry from the University of Southern
Mississippi, where she received Dean’s Distinguished Outstanding Graduate student award.
After graduation, Dr. Vaidya joined DuPont and over the past 29 years has worked in various R&D, application development and quality control and technical marketing roles in the US, Singapore, China and India. She holds over 10 patents and received the distinguished DuPont Corporate Marketing Excellence award. In 2007 she joined the Crop Protection businesses, working on alliance networking, quality assurance/monitoring in Asia and Brand Protection. Over the past 9 years she has worked with a global anti-counterfeit / brand protection team and now leads the Global Anti-counterfeit / Brand Protection team for DuPont Crop Protection.
Jessica Heiss is Vice President and Trademark Counsel for The Estee Lauder Companies Inc., the global leader in prestige beauty with a diverse portfolio of 25+ brands sold in 150+ countries. In addition to handling anti-counterfeiting enforcement work for all brands, Jessica is responsible for global trademark clearance and prosecution, as well as trademark litigation management and conflict resolution for the Smashbox, La Mer, Darphin and Glamglow brands. She also serves as the Dedicated Lawyer for the La Mer brand, counseling senior brand management on a wide variety of IP and non-IP issues. Prior to joining The Estee Lauder Companies in 2004, Jessica was an Associate in the IP department of Pedersen & Houpt in Chicago, Illinois. Jessica received her B.A. from the University of Illinois at Urbana-Champaign and her J.D. from DePaul University College of Law. She is a frequent speaker on trademark related issues.
For over 15 years, James E. Griffith has counseled clients on a wide range of strategically important commercial and intellectual property issues. He is experienced in the litigation and resolution of disputes in the areas of trademark, unfair competition, copyright, publishing, art law, entertainment, privacy matters, and computer-related law. Additionally, he counsels clients on a wide array of intellectual property matters and in the preparation and negotiation of licensing and other agreements in the fields of trademark, copyright, and rights of publicity, among others.
Relani Belous is Senior Vice President, General Counsel, for Penthouse Global Media Inc. Her oversight of the legal affairs of the company include advising its digital, entertainment and web based content divisions, management of the massive worldwide trademark portfolio along with supervising issues related to copyright, distribution, production, privacy policies, DMCA, social media, IP litigation, employment, trade secrets and advertising/FTC/legal compliance. Ms. Belous duties also include supervision of outside counsel and dealing with FCPA and international law issues.
Previously Ms. Belous was Vice President, Senior Counsel, IP & Digital Media for FriendFinder Networks and Vice President, Business & Legal Affairs, Worldwide Television Distribution for MGM Studios. While at MGM Studios she negotiated MGM's initial digital distribution deals (which were the first in the marketplace), as well as drafting and negotiating its domestic and international licensing, distribution and production deals. She has also been active in the negotiation and drafting of cutting edge media deals and advised various media/entertainment companies in emerging media distribution platforms.
Ms. Belous currently serves as co-chair for the programming committee for the Association of Corporate Counsel's the IT, Privacy, and eCommerce Committee, and was named the Association of Media & Entertainment Counsel's, "Technology & New Media Counsel of the Year" in 2013.
Ms. Belous holds a B.S. in Business Administration from the University of Florida and a J.D. (magna cum laude) from Southwestern University School of Law. She is a member of California and New York Bars and a Certified Public Accountant. She is also a frequent speaker on legal and media panels related to the entertainment and digital industries.
Andrew is senior counsel at Shutterstock. His work covers a broad range of matters, including commercial transactions, licensing, information, data privacy and copyright matters. He earned his J.D. from Brooklyn Law School and his B.A. from Tufts university. Andrew has also held positions at Bramson Entertainment Bureau and eMarketer.
Julia Huston is well known for achieving outstanding results for clients in high-stakes intellectual property and unfair competition cases. She is a Partner in Foley Hoag LLP’s Intellectual Property and Litigation Departments, Chair of the firm’s Trademark, Copyright and Unfair Competition practice group, and Co-Chair of the Advertising and Marketing practice group.
Julia provides a full range of services to clients in connection with their valuable intellectual property, including litigation, strategic transactions, portfolio development, and counseling.
Julia is particularly well known in the field of trademark law. Julia was recently described as
“one of the top branding attorneys in the United States” and “a trailblazer in both
prosecution and litigation” by WTR 1000, an international review of trademark attorneys in
which Julia has consistently earned top ratings.
In the litigation arena, Julia acts as lead counsel in cases before the federal courts, the
Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, the U.S.
Customs and Border Protection (CBP), the National Advertising Division (NAD) of the
Better Business Bureau, and in international domain name dispute resolution proceedings.
Our clients entrust Julia with enforcing and defending their famous trademarks, bet-thecompany
technology, and other key intellectual property assets. A forceful and creative
courtroom advocate, Julia has obtained multimillion-dollar judgments and settlements in
In the context of corporate transactions, Julia leads due diligence teams that thoroughly
investigate, and assist clients in assessing the value of, intellectual property being acquired.
Julia also provides comprehensive advice concerning protection of intellectual property
rights in licensing and assignment transactions. Julia’s experience extends to the
commercialization of personal names and rights of publicity, as well as more traditional
trademarks, copyrights and patents.
In addition to litigation and transactional work, clients regularly rely on Julia’s counsel in
developing long-term strategies for their IP portfolios. Julia counsels clients in the fields of pharmaceutical products, health care, consumer products, electronics, software and
hardware, insurance, financial services, energy, education, publishing, and entertainment.
Julia’s extensive experience in litigation and dispute resolution enables her to build her
clients’ IP portfolios strategically with an eye toward enforcement and defense for maximum
advantage in the marketplace.
A frequent author and lecturer on intellectual property topics, Julia’s articles have appeared
in World Trademark Review, Managing Intellectual Property, Intellectual Property Today,
and other prominent publications. She has publicly commented on high-profile intellectual
property cases for Channel 4 WBZ-TV, Channel 7 WHDH, Fox 25 News, and major
metropolitan newspapers. Julia is a regular contributor to Foley Hoag’s Trademark &
Copyright Law Blog.
Julia holds leadership positions in several civic, professional and charitable organizations,
and previously served as President of the Boston Bar Association (BBA), President of
Greater Boston Legal Services (GBLS) and President of the Women's Bar Association of
Massachusetts (WBA). Julia is currently Chair of the Parallel Imports Committee of the
International Trademark Association (INTA), which addresses the unauthorized movement
of parallel imports, also known as gray market goods, across country borders.
Peter Brody has been successfully litigating intellectual property cases and other complex disputes in federal and state courts across the United States for over 30 years. As a member and former chair of Ropes & Gray’s intellectual property litigation group, Peter has litigated every type of IP case – patent, copyright, trade secret, trademark, and false advertising – as well as a wide range of constitutional, administrative, and contract disputes. In addition to his trial and appellate practice, Peter has served as lead counsel in numerous domestic and international arbitrations, as well as hearings and proceedings before federal and state administrative agencies. He routinely advises clients on trademark and copyright protection and enforcement in the social media arena, best practices for protecting confidential information and trade secrets from disclosure on social media sites, and federal and state regulation of advertising and promotion via social media. Peter also helps clients protect themselves from – and respond to – incidents of doxing (doxxing). His extensive knowledge of intellectual property law, careful case preparation, and skilled advocacy are valued by leading companies in a wide array of business sectors, including alcoholic beverages, consumer electronics, pharmaceuticals and medical devices, financial services, food, and personal care. Peter also lectures and writes extensively on social media, intellectual property and alcoholic beverage law and practice. He holds a J.D. from Harvard Law School and a B.A. from Princeton University.
Dan Shulman is Chief Intellectual Property Counsel for Reynolds Group Holdings, Ltd. and Fram Autoparts, a $13 billion global packaging and automotive parts company comprised of Reynolds Consumer Products, Pactiv, Closure Systems International, Evergreen Packaging, Graham Packaging, Fram and Autolite. Dan is responsible for managing the global patent and trademark portfolio of those combined companies, setting IP strategy, managing all IP litigation and acting as lead counsel in appellate work before the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. Dan also routinely leads corporate initiatives in which IP drives significant value. Dan was with Pactiv prior to its acquisition by Reynolds Group Holdings in 2010. Prior to joining Pactiv in 2007 as its Chief IP Counsel, Dan was Senior IP Licensing Counsel for Motorola. Prior to that, Dan was an associate at Mayer Brown LLP from 1999-2006.
Dan received his J.D. from Loyola University Chicago School of Law in 1999, and is a graduate of Northwestern University (1996) with degrees in Mathematics, Physics and the Integrated Science Program.
Dan has been recognized as one of the Top Forty Lawyers Under 40 in Illinois (2013) by The Law Bulletin, and as a Managing IP In-House IP Star 2015 and 2016. Dan is a frequent speaker on topics of IP law, and has authored numerous articles on various IP topics and Federal Circuit jurisprudence. Dan is the author of two books: Insights Hurt: Bringing Healing Thoughts to Life, and Personal Midrash: Fresh Insights Into the Torah, due out in August.