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IP Issues in Business Transactions 2022 NY


Speaker(s): Alexander Altman, Alicia A. Russo, Amy Benjamin, Andrew Baum, Angela J. Grayson, CIPP/US, CLP, Carolyn H. Blankenship, David Rabinowitz, Debra A. Dandeneau, Gail H. Zarick, Jeffrey D. Osterman, Jennifer D.. Silverman, Joel Wolfson, Jonathan M. Seiden, Joseph M. Casino, Kenneth K. Cho, Kim Youngberg, Kimberly Chotkowski, Laura B. Taylor, Maria A. Scungio, Martin Köhler, Matt Goldberg, Melvin C. Garner, Michael R.. Manley, Shaton C. Menzie, Zhun Lu
Recorded on: Jan. 4, 2022
PLI Program #: 335965

Amy J. Benjamin is the founding partner of Benjamin Law PC in New York, NY, specializing in domestic and international trademark clearance, prosecution and litigation, copyright and false advertising. 

Ms. Benjamin is a member of the American Bar Association’s Intellectual Property Law Section, where she has served  in a number of leadership positions. 

Ms. Benjamin earned her J.D. in 1989 from New York University School of Law, where she was a Fellow in Libel Law, and her B.A., cum laude, in 1986 from Brandeis University.   Prior to founding Benjamin Law PC, she was an associate in the intellectual property group of a major international law firm and then a partner at a boutique intellectual property firm.

Ms. Benjamin has been annual recognized by New York Metro Super Lawyers as a leading intellectual property attorney.


Jeffrey Osterman is the co-head of Weil’s Technology & IP Transactions practice and is based in New York. Mr. Osterman concentrates on matters with deep commercial or technical complexity and has had extensive experience with pure patent licensing, technology transfer, outsourcing, technology integration, content licensing and merchandising. 

Mr. Osterman regularly advises major pharmaceutical companies in connection with licensing and collaboration agreements; represents semiconductor and other technology companies in connection with development and licensing agreements; leads the technology and intellectual property aspects of major corporate transactions; and advises on the treatment of intellectual property matters in bankruptcy cases. 

Mr. Osterman is ranked Band 1 for Technology & Outsourcing in New York by Chambers USA, where clients note "he’s just extremely thorough and he has the memory of an elephant." He is "very smart, very responsive and won't fight about matters that aren't important." He is also recommended for Patents: Licensing, Technology Transactions and Healthcare: Life Sciences by Legal 500 US. Mr. Osterman is recognized as an “IP Star” for IP Transactions, Patent Strategy & Counseling and Copyright by Managing Intellectual Property and has been named 2020 “Lawyer of the Year” for Technology Law in New York by Best Lawyers in America. He is “Highly Recommended” by IAM Patent 1000, where clients have noted he has “a stellar ability to see the forest through the trees, is a clear and concise draftsman and a constructive negotiator,” and that he is “the kind of sophisticated IP lawyer you need on a tough deal – he understands his clients’ industry and business and fights hard while communicating clearly in negotiations to get to a resolution.” Mr. Osterman was named a 2016 Technology “MVP” by Law360.


Kenneth K. Cho is the Managing Attorney at the Cho Law Group, LLC where he specializes in litigation and dispute resolution. He has more than 30 years of experience in commercial litigation, cross-border dispute resolution, intellectual property litigation and licensing, IP asset management, and valuation, and counseling matters.  

Ken has represented a diverse client base ranging from individuals and small business owners to large international companies handling matters that involve commercial disputes; intellectual property matters involving cryptocurrency exchanges, semiconductor and OLED manufacturing, telecommunications and mobile telephony, biomedical devices, optical disc storage technologies, and others; as well as counseling and acquisition of intellectual property rights.  

In addition to handling litigation and intellectual property matters in the United States, Ken’s experience is international in scope and spans Europe and the Far East. Ken has worked overseas as a U.S. attorney at South Korea’s most prestigious law firm and spent about a decade working “in-house” in the Intellectual Property and Standards group of Philips Electronics and as a patent assertion attorney for AT&T Corp. specializing in offensive patent assertion and licensing matters.  


Kimberly S. Chotkowski is an accomplished intellectual property professional with 18 years of patent litigation, licensing and prosecution experience. For 4 years in a row, Kim has been listed in the Intellectual Asset Magazine as one of the top 300 IP Strategists in the World. She has been involved in litigating cases in a wide variety of technologies including wireless and wired telephony (handset, air interface and base station), microprocessors, semiconductors, USB, touch screens, automotive components, active storage systems, editing software, video on demand, pharmaceutical etc. Kim is a proven leader with capabilities in building litigation teams, strategic thinking and implementing workable plans.

Kim has an established track record of litigating/negotiating complex, global IP licenses and monetization opportunities specializing in assisting clients in maximizing their financial return on research and development via licensing their technology. Kim’s experience provides significant global IP licensing knowledge having worked with a licensing firm who negotiated with more than 70 companies worldwide, obtaining licenses worth approximately over $2 billion on behalf of their clients. Kim supports her clients’ licensing efforts in a broad range of technologies including semiconductor processing and circuits, digital cameras, cell phones, optical storage, wired and wireless communications, internet applications, chemical arts, telecommunications and television, automotive, bioelectrical/biomechanical and pharmaceutical arenas.

Kim also offers strategic IP portfolio management. By tailoring her proactive IP management approach to each individual client’s business and technical goals, she develops cost-effective, value-generating portfolios that assist clients by protecting core technology, licensing and patent brokering. Kim has managed and served as an expert witness in various patent litigations. Kim is an inventor herself holding two patents in antenna technologies.

A frequent speaker, Kim has covered pertinent issues related to IP Monetization, international licensing and international patent portfolio management at the Licensing Executives Society, the American Bar Association, PLI and other independent professional conference forums. She has spoken on behalf of the US State Department on licensing in China. Kim holds a BS in electrical engineering and a BS in Humanities/History from Worcester Polytechnic Institute, a JD from the Franklin Pierce Law Center and an MBA, concentration in international business and finance, from Sacred Heart University.

Kim is a member of the Pennsylvania, Connecticut and New York and Patent Bars, a Certified Licensing Professional and a former committee member of the Intellectual Property Owners and an active participant in the Licensing Executive Society’s effort to provide standards of practice to the licensing profession.

PRACTICE AREAS

  • Licensing
  • Litigation
  • Patents
  • Trademarks


Zhun Lu is a partner in the Delaware office of Rimon PC. He is a seasoned intellectual property attorney with 20 years of expertise advising clients on patent prosecution, counseling, opinions, due diligence, transactions and litigation primarily in the biotechnology, biomedical, pharmaceutical, chemical, telecommunications, electronics and semiconductor fields. Mr. Lu also serves as outside general counsel to clients, advising them on corporate matters such as IP management and other business operation issues in the U.S. With a cross-border focused practice, Mr. Lu regularly works with Asian Pacific companies entering the U.S., as well as the U.S. and other international companies operating and doing business in the Greater China marketplace.

Mr. Lu is a recognized thought leader in intellectual property, having frequently presented at conferences and to private audiences, including law firms, universities and corporations. Mr. Lu is currently Co-Chair of the Far East Committee of the American Intellectual Property Law Association (AIPLA). He is also the former Co-Chair of the China Committee at AIPLA.

Prior to legal practice, Mr. Lu was a research scientist at the Yale School of Medicine, providing him with a deep understanding of his biomedical industry clients.  Mr. Lu interned for 1 year for the Honorable Peter Dorsey, former chief judge of the Federal District Court for the District of Connecticut, giving him invaluable insight into the anatomy of litigation and advocacy which he uses in his career.

Mr. Lu graduated cum laude from the Quinnipiac University Law School and received his Ph.D. in molecular biology from Auburn University.


Alex Altman is a senior associate in the New York, NY office of Arnold & Porter specializing in global protection, privacy and cybersecurity matters.

Alex graduated from Fordham University in 2013. He has a strong understanding of emerging technologies and the legal challenges that come with those technologies. He counsels clients from a wide array of industries on developing compliance programs, assessing privacy and cybersecurity programs, responding to data breaches, and litigation of data privacy claims.

Alex brings a holistic, results-oriented approach to his practice, providing clients with solutions and not just problems. He is a zealous advocate and trusted counselor who keeps his clients’ strategic goals in the forefront of all of his work.


Alicia Russo is co-chair of Venable’s Intellectual Property Transactions Group. Alicia has significant experience in IP due diligence and licensing associated with high-profile acquisitions. She has represented clients in complex patent litigation and contested proceedings before the United States Patent and Trademark Office (USPTO) and has secured patents for clients in numerous technical fields. She focuses on biologics and small-molecule pharmaceuticals, informed by her prior work in medical research. Alicia also advises clients on matters related to energy, fiber technology, building materials, biotechnology, and bioinformatics.

In addition, Alicia leverages her understanding of global IP considerations to assist international clients with issues such as foreign patent litigation, oppositions, invalidation proceedings, and patent prosecution. 

Having spent more than a decade conducting academic medical research, Alicia has a passion for the field and brings a deep understanding to her clients’ technical matters. She has authored numerous articles in noteworthy scientific journals, including Science, Nature, Cell, and Proceedings of the National Academy of Sciences, some of which have been featured on the covers of Nature and Cell. She is also extensively published in the legal field.


Debra A. Dandeneau is co-chair of Baker McKenzie's Global Restructuring and Insolvency Group and chair of its North America Restructuring and Insolvency Group. Her practice focuses on business reorganizations and debtor and creditors’ rights.

Ms. Dandeneau has been ranked by The Best Lawyers in America 2011-2018 in the practice areas of Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law, and Litigation-Bankruptcy. She has also been recognized by Legal 500 US for Municipal Bankruptcy and Super Lawyers 2006-2017 for Bankruptcy. Super Lawyers has also named Debra among the 2017 Top Women for Bankruptcy Business in New York.

Ms. Dandeneau has dealt with a variety of entities experiencing financial distress, as well as a range of industries. Over the course of her career, her work has included representations in the real estate, manufacturing, power generation, healthcare, municipal, retail, and service sectors.

Ms. Dandeneau's professional honors include:

  • "Top Women" for Bankruptcy: Business in New York, Super Lawyers, 2017
  • "Super Lawyer" in Bankruptcy, Super Lawyers, 2006-2017
  • Pro Bono Publico Award, The Legal Aid Society, 2008
  • Recommended Lawyer in Municipal Bankruptcy in the US, Legal 500 US, 2015
  • "Best Lawyer" in Bankruptcy and Creditor-Debtor Rights/Insolvency and Reorganization Law and Litigation, Best Lawyers in America, 2011-2018


Jennifer D. Silverman is a New York based intellectual property attorney who concentrates on matters related to licensing, e-commerce, trademarks, copyrights and data privacy.

Ms. Silverman has extensive experience with intellectual property licensing.  Her representative transactions include negotiating a license in a recording artist’s name for use in connection with fragrance products by a cosmetics manufacturer, licensing a fashion designer’s brand name and original works to international retailer Desigual for use in a a co-branded collection, and representing a fashion designer in negotiations for co-branded, custom designed laptop computers with HP and earphones with Monster Cable.  Recently, she represented the owner of rights in a collection of legal treatises in license negotiations with Thomson Reuters.

Prior to starting her own firm, Ms. Silverman was a partner at Ellenoff Grossman & Schole LLP, where she led the intellectual property department for ten years.  Before that, Ms. Silverman was a partner in the intellectual property department of Pryor Cashman LLP.

Ms. Silverman was recognized by Super Lawyers for Intellectual Property in 2020-21 and has an AV® Peer Review Rating in the legal directory Martindale Hubbell.

She serves as Co-Chair of the Data Privacy and Cyber Security Subcommittee of the High Tech Sector of the Licensing Executives Society (LES) USA and Canada.

Ms. Silverman is admitted to the bars of New York and New Jersey and to practice before the courts of the Southern & Eastern Districts of New York. 

 


Melvin Garner is a Partner in the firm of Leason Ellis. His practice includes all phases of patent, trademark and copyright litigation. It also includes patent procurement involving various technologies, as well as infringement and validity opinions. He has appeared as an expert witness at several trials and has served as a mediator.

Mel is the author of numerous articles and of Chapter 13, “Intellectual Property Protection of E-Commerce” and Chapter 58, “Trade Secret Causes of Action and Defenses, Including Sample Pleadings,” Intellectual Property Counseling and Litigation, Matthew Bender (2010). In addition, he is a frequent lecturer at PLI events.

Mel is a Past President of the New York Intellectual Property Law Association and a Past President of the American Intellectual Property Law Association. He is on the Executive Committee and is a founding member of the Hon. William C. Conner Inn of Court. He is also a member of the Magistrate Judge Merit Selection Panel for the U.S. District Court for the Southern District of New York. He is listed in Euromoney’s Guide to the World’s Leading Patent Law Experts, Who’s Who Legal - Patents, and New York Super Lawyers.

EDUCATION:
J.D. Brooklyn Law School
M.S. Electrical Engineering, New York University
B.S. Electrical Engineering, Drexel University

BAR ADMISSIONS:
New York
U.S. Patent & Trademark Office

COURT ADMISSIONS
United States Supreme Court
U.S. Court of Appeals for the Second Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York


Michael R. Manley currently serves as Senior Vice President and General Counsel of 1-800-FLOWERS.COM, INC., a leading provider of gifts for all celebratory occasions, including gourmet foods and floral gifts. Mr. Manley is responsible for managing all legal affairs of the company.

Previously, Mr. Manley was a partner at the law firm, Venable LLP, where he led the firm's Fund Formation practice and headed its Risk and Compliance Group.  Prior to Venable, Mr. Manley served as the General Counsel and Chief Compliance Officer of CION Investment Management, LLC and CION Investment Corporation and as Managing Director and Counsel of ICON Capital Corp.  Prior to ICON, Mr. Manley served as Managing Director of Plainfield Asset Management LLC (PFAM) and Co-General Counsel, Chief Compliance Officer and Secretary of Plainfield Direct, a fund managed by PFAM. Mr. Manley managed the legal and compliance functions for Plainfield Direct and served as senior counsel to PFAM.

Prior to Plainfield, Mr. Manley served as President of PartMiner, Inc. from 2002 to 2007, a leading provider of information and procurement services to the global electronics, defense/aerospace, telecom, and medical devices industries. From 2004 to 2007, Mr. Manley also served as President of the PartMiner Information Services division, a leading provider of enterprise data, software and services to the global electronics, defense/aerospace, telecom and medical devices industries. Mr. Manley joined PartMiner in 1999 as Vice President and General Counsel.  Previously, Mr. Manley was an attorney with the law firm of Gould & Wilkie LLP, now known as Thompson Hine LLP, where he was responsible for building the its New Media and Internet practice.

Mr. Manley is a graduate of Yale University and the Fordham School of Law. Mr. Manley serves on the Board of Directors of Youth Soccer of New Rochelle Inc. Mr. Manley has been an Adjunct Professor in the Hagan School of Business at Iona College. 


Mr. Wolfson is a Director and Associate General Counsel in the Office of General Counsel for the Bank of America Merrill Lynch business in New York City.  He concentrates on bank/broker-dealer contracts, computer contracts, intellectual property, commercial, and corporate matters. 

He had been a partner in Blank Rome’s Washington, D.C. office, with a concentration in transactions, intellectual property, corporate law, and public policy for the: financial industry, information provider, biotechnology, software, and computer fields. 

Prior to that, Mr. Wolfson was Vice President and Associate General Counsel and head of The Nasdaq Stock Market’s e-Commerce and Intellectual Property Practice Group. 

His publications include (1) a multi-volume treatise on high-technology contract law; and law review articles on: (2) First Amendment protections against liability for incorrect information; (3) express warranties and published information; (4) the ability of licensing law and copyright law to peacefully co-exist; and (5) class action suits in bankruptcy court.

 


 


Shaton C. Menzie is an Associate in the Atlanta, Georgia office of Ballard Spahr LLP, specializing in all aspects of intellectual property litigation, including patent, trademark, trade secret, and copyright.

She also commits a significant portion of her practice advising and educating emerging businesses, nonprofits, and creatives on legal issues in the areas of general business and contract law.

Shaton graduated from the University of Chicago Law School in 2013 after receiving a computer science degree from Howard University and information science degree from The University of Michigan.  Upon graduation, she received the coveted Ann Watson Barber Award for Outstanding Contribution to Student Life and Earl B. Dickerson Leadership Award, in honor of her work to improve the experience of students at The Law School.  Shaton has worked in various law firm settings, first at a firm specializing in trademark law, then at an international boutique intellectual property law firm, and now as a member of the IP litigation team at Ballard, a general practice firm.

Shaton has been recognized by several outlets as a leader under the age of 40 and as an attorney to watch. She is a frequent speaker and writer on intellectual property topics and the need to increase diversity both in STEM and in law, often highlighting the gap in representation of IP lawyers of color.  Shaton is a proud member of Pi Alpha Omega Chapter of Alpha Kappa Alpha Sorority, Inc., the Atlanta Chapter of Jack and Jill of America, Inc., Diverse Representation, State Bar of Georgia’s Committee to Promote Inclusion in the Profession, of which she recently completed her tenure as Co-Chair.  Her most cherished role, however, is as mommy to Sasha Gabrielle (14) and Sydney Claire (13). 

 


David Rabinowitz is a partner in the Litigation Department and a member of the Intellectual Property Department and Legal Ethics and Law Firm Practice Department at Moses & Singer, where he has been a partner since 1985. He handles civil commercial cases of all kinds and in particular both litigates and advises clients on financial industry and intellectual property matters. He is a frequent speaker on ethical issues concerning negotiations. Mr. Rabinowitz has appeared in state and federal courts and in arbitrations throughout the United States.

Mr. Rabinowitz has lectured and participated on panels before the Bar Association of the City of New York, the American Bar Association, the Practicing Law Institute, the Institute of International Banking Law, the Copyright Society of the United States, the New Jersey Intellectual Property Law Association, the National Association of Recording Manufacturers, the Licensing International annual convention, the Professional Education Broadcast Network and the Massachusetts Software Council. He has taught Copyright Law at Seton Hall Law School. He is a member and former trustee of the Copyright Society of the United States. Mr. Rabinowitz has published numerous articles which have appeared in Advertising Age, Entertainment Law Reporter, The Entertainment Publishing and the Arts Handbook, The Bulletin of the Copyright Society of the United States American Lawyer's Corporate Counsel Magazine and The Practical Lawyer.

Education

·      Columbia University School of Law, J.D., 1976, Harlan Fiske Stone Scholar, 1973-1976

·      Massachusetts Institute of Technology, S.B., 1972

Articles

·      "New York Resolves In-House Counsel Bar Admission Problem"

·      "Up Close and Professional with New York’s Engagement Letter Rules"

·      "Communications Decency Act"

·      "Non-Traditional Fee Arrangements and Doing Business with Clients"

·      "Everything You Ever Wanted To Know About the Copyright Act Before 1909"

·      "Web Site Story 6-Breakaway Employees Beware"

·      "Web Site Story 5-Emerging Limits to Out-of-State Jurisdiction over Web Sites"

·      "Web Site Story 4-Nationwide Internet Jurisdiction is not Ended by Blue Note"

·      "Web Site Story 3-The Emerging Tort of Domain Name Infringement"

·      "Web Site Story 2-Finding Yourself Subject to Jurisdiction Far, Far Away"

·      "Web Site Story-A Legal Primer for Web Site Owners and Designers"

·      "Copyright Preemption: New York State's Erroneous Interpretation"

·      "Copyright and Trademark Infringement: Current Techniques for Plaintiffs and Defendants"

Presentations – (last 10 years - most recent year for series)

·      2021 and earlier Practicing Law Institute program, "Ethics for the Negotiating Lawyer"

·      2020 and earlier Practicing Law Institute program, "Advanced Licensing Agreements"

·      2020 and earlier Practicing Law Institute program, "Understanding The Intellectual Property License"

·      2019 and earlier Institute of International Banking Law Standby and Guaranty Forum and Law Summit, “Recent Letter of Credit Cases”

·      2016 New Jersey Intellectual Property Law Association, “Cases in Negotiation Ethics”

·      2015 Practicing Law Institute program, “Outsourcing 2015: Sourcing Critical Services”

·      2014, 2012, 2007 Copyright Society of the U.S.A., “Show Me the Money: The Essentials of Valuation of Copyrights in Transactions and Litigation,” "Basic Ethics for the Negotiating Lawyer," "Non-Traditional Fee Arrangements and Doing Business with Clients"

·      2013 National Association of Recording Manufacturers, “Negotiation Ethics”

 


Martin Köhler is specialized in patent infringement litigation and is regularly active in trademark and design rights enforcement as well as in unfair competition litigation. Outside court, his other work includes providing advice on licensing, research and development agreements as well as on employee invention matters.

Martin regularly represents clients in the areas of electronics, telecoms, mechanical and chemical engineering, automotive technology, pharmaceuticals and medical devices.

Martin publishes regularly on intellectual property issues and is a speaker at conferences on patent law issues. He is also a visiting lecturer at the Hagen Law School.


Matt is an attorney working in MUFG’s New York office and is responsible for providing legal advice relating to data privacy, protection, security, use, and transfer issues affecting MUFG’s global operations.  Prior to joining MUFG in January 2018, Matt advised on data privacy and data protection matters for American International Group (AIG) and Chubb for 8+ years, and is experienced in contract negotiation, third-party vendor risk management, and reviews of new technology engagements and strategic initiatives. Matt received his J.D. from Seton Hall University School of Law and his B.A. from Rutgers, The State University of New Jersey and holds a Certified Information Privacy Professional (CIPP) designation from the International Association of Privacy Professionals (IAPP).


With a degree in computer science, Joe Casino has carefully followed the recent proliferation of artificial intelligence, machine learning and block chain technologies and how different IP regimes can protect these technologies. 

Joe’s 20+ year career is highlighted by his work as lead counsel in hard-fought patent litigations throughout the US and in Patent Office proceedings. As the leader of Wiggin and Dana’s Intellectual Property Practice Group, he advises clients on patent office disputes, complex licensing, patent monetization, patent portfolio development, and worldwide intellectual property strategic matters.

His experience includes over 150 patent cases in a variety of high-tech fields, including consumer tech, electronics, aerospace, computers, hybrid electric vehicles, semiconductors, smart phones, medical devices, and batteries. Examples include Lufthansa Technik AG v. Astronics Advanced Electronic Systems Corp., Case No. 2:14-CV-1821 (W.D. Wash.), an avionics industry case where Joe led the patent team to a successful claim construction and summary judgment of patent indefiniteness, which was affirmed on appeal; and Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117 (N.D. Calif.), a medical-device case where Joe’s client obtained a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent, including an award of attorneys’ fees, setting the current standards for inequitable conduct through an en banc appeal.

His knowledge spans all aspects of IP law, including litigation, licensing, opinions, and prosecution. His work has earned him industry recognition, being named one of the world’s leading IP strategists by IAM Strategy 300, as well as Super Lawyer honors. Joe has been the lead negotiator for license and cross-license discussions involving some of the largest patent portfolios. Joe is Secretary for the Licensing Executives Society standard-setting program for developing an ANSI standard of best practices for licensing negotiations.

Joe received his J.D. cum laude from Brooklyn Law School, where he was an editor for the Brooklyn Journal of International Law and received various academic awards. He earned a B.S. cum laude in computer science from Brooklyn College.

 


Angela J. Grayson, CIPP/US, CLP is an accomplished nationally recognized lawyer, speaker, and author.  She is Principal Member and Founder of Precipice IP PLLC.  PRECIPICE is an award-winning consultancy and technology law boutique with expertise in patent, trademark, copyright, and data law. PRECIPICE helps entrepreneurs and technology-focused businesses protect their products, brands, designs and data. 

Prior to founding PRECIPICE, Ms. Grayson was Associate General Counsel, Intellectual Property and Patent Operations Lead at Walmart Stores, Inc.  Before joining Walmart, Ms. Grayson served as in-house patent counsel for several Fortune® 100 companies, and she has prior experience as a Patent Examiner for the United States Patent and Trademark Office.

She is committed to advancing Diversity and Inclusion (D&I) in the legal profession, and is equally committed to STEM (Science, Technology, Engineering, and Math) initiatives that focus on better preparing our youth to compete. She is a past Board Chair of the Minority In-House Counsel Association (MIHCA), and previously served on the Board of Trustees for the American Intellectual Property Law Education Foundation (AIPLEF).

Ms. Grayson is a Director on the Board of the Patent Pro Bono Advisory Council, and is past Chair of the American Intellectual Property Law Association (AIPLA) Special Committee on Pro Bono. Ms. Grayson is the current Chair of AIPLA Diversity in IP Law Committee, and she serves Chair of the Intellectual Property and Sports Law Section of the Mississippi Bar.

 

 


Carolyn H. Blankenship is General Counsel, Innovation & Product for Thomson Reuters.  She joined Reuters in 2001 and before that held a variety of IP-related positions as both in-house and outside counsel, including stints at Skadden, Arps and Priceline.com.

Carolyn’s practice focuses on fostering innovation and protecting those innovations throughout the company.  In addition, Carolyn oversees all patent litigation and supports the IP aspects of the company’s M&A activity. 

As an undergraduate, Carolyn attended the Massachusetts Institute of Technology for two years and went on to earn a B.A. in Biology from Harvard College.  She has a J.D. from Arizona State University College of Law and clerked for the Hon. Noel Fidel of the Arizona State Court of Appeals.


Gail Zarick is a Counsel at IBM, where she currently supports the IBM Storage Division and advises on intellectual property issues for the IBM Corporate organizations.  She has previously supported the Research and Security Divisions and Regulatory Compliance and has managed diverse teams in the IP Law department.  She has extensive experience with all aspects of developing and creating value from an IP portfolio. 

In addition, Gail serves as a pro bono leader at IBM’s Armonk location, where she has expanded opportunities for IBM lawyers to provide pro bono representation to non-profits and underserved communities.  She is also an Education Leader for the IBM global law department.

Gail is a frequent speaker at PLI conferences.

Before joining IBM, Gail practiced intellectual property law at Pennie & Edmonds LLP in New York. 

 

JD, Pace University School of Law

MSE, University of Pennsylvania

BSE, Princeton University

 


Jonathan Seiden is an attorney and business affairs executive with over 20 years of experience sourcing, negotiating, and drafting industry-specific agreements in the fields of entertainment, sports, and media.

Since July 2016, Mr. Seiden serves as Senior Vice President, Associate General Counsel for Endeavor (formerly WME-IMG).  As a member of the Endeavor legal team, Mr. Seiden is currently serving as (i) global head of the Intellectual Property practice for Endeavor, responsible for Endeavor’s trademark, patent and copyright portfolio, content and brand protection program; (ii) the head of the global legal team for IMG Licensing (a subsidiary of Endeavor) and (iii) General Counsel of the Miss Universe Organization (a subsidiary of Endeavor).  Mr. Seiden is responsible for counseling IMG and its clients on legal matters, including intellectual property licensing, live events, sponsorship and endorsements, television distribution, and government relations.  

In addition, since September 2016, Mr. Seiden serves as a Lecturer in Law at the University of Pennsylvania Carey Law School, and teaches a course entitled Entertainment Law Transactions.

From November 2014 until June 2016, Mr. Seiden served as Senior Vice President, Business and Legal Affairs at SFX Entertainment, Inc. (“SFX”).  In his capacity as SVP for SFX, Mr. Seiden was responsible for counseling SFX and its live entertainment and media companies with respect to entertainment law matters, including, without limitation, live events, music artist agreements, brand integration and sponsorship deals, and new media rights.  In addition, Mr. Seiden was part of a small team that transformed SFX’s “Beatport” music download platform into a music streaming service, and led efforts to negotiate blanket music publishing and master recording agreements with content creators.

Prior to joining SFX in 2014, Mr. Seiden was Vice President, Intellectual Property and Legal Affairs for CORE Media Group Inc. (“CORE Media”) from 2006 – 2014. In his capacity as Vice President for CORE, Jonathan counseled CORE and its subsidiaries, namely 19 Entertainment and Sharp Entertainment (and previously Elvis Presley Enterprises and Muhammad Ali Enterprises), with respect to intellectual property and entertainment law matters, including, without limitation, the acquisition of intellectual property content, character and merchandise licensing, music publishing, master recording agreements, intellectual property maintenance, enforcement, and litigation.

Prior to joining CORE in 2006, Jonathan was a member of the Intellectual Property and Technology Group at Skadden, Arps, Slate, Meagher & Flom LLP in New York primarily focusing on intellectual property acquisitions and licensing.

 

Education

University of Pennsylvania Law School, J.D., 2001

Cornell University, Bachelor of Arts, 1998


Kim Youngberg is the Chief Legal Officer of DJDTP, a film/TV music production house, and partner at The Davis Firm, a boutique entertainment law firm.  The firm concentrated in music for many years but is now expanding into film and TV.  Prior to DJDTP, Kim was the General Counsel of Screenvision Media, a cinema advertising company.  In addition to the normal blocking and tackling as a general counsel, at SVM Kim created deals for emerging technologies, digital and programmatic advertising, digital insights and audience analytics for advertisers and exhibitors.  She also developed deals for AR and VR in theater lobbies.  Before advertising, Kim spent 9 years as the SVP Business and Legal Affairs at Wind-Up Entertainment, an indie record label and music publisher.  Kim helped launch a merchandising company while at Wind-Up and lead the label through the transition from analog to digital music consumption.  With her new jobs, Kim has come full circle, she started her legal career working in the glory days of music at Davis Shapiro & Lewit, a music law firm with superstar clients such as Mary J. Blige, Black Eyed Peas and Cheap Trick.


Maria Scungio is based in the firm’s New York office and has more than 25 years of experience advising on trademark, copyright and design rights—including global clearance, protection, enforcement, licensing and transactional matters—for well-known brands.

Maria’s practice includes counseling clients in the fields of skincare, apparel, footwear, jewelry, food and beverage, pharmaceuticals, entertainment publishing and programming, healthcare services and fiber laser products.  She advises on strategic issues affecting the exploitation, enforcement, transfer and re-alignment of intellectual property rights, for U.S. and worldwide portfolios.  

Maria has litigated cases before federal courts and the Trademark Trial and Appeal Board.  She has also partnered with clients to serve as interim in-house intellectual property counsel during corporate transitions.  

Prior to joining Robinson & Cole, Maria served as co-chair of the Trademark, Copyright and Advertising Group at Locke Lord and at Edwards Wildman (2008-2017).  She began her legal career as a law clerk to the Honorable Jane A. Restani at the US Court of International Trade. 

To advance work on harmonization of IP laws globally, Maria is an active member of AIPPI-US, which she formerly chaired (2016-18).  She also currently serves on the AIPLA’s Trademark Law, IP Practice in Europe, IP Practice in Japan and Harmonization Committees.


A retired partner and intellectual property lawyer with Foley & Lardner LLP, Andrew Baum focused his practice on trademark, unfair competition, false advertising and copyright litigation, counseling, licensing and enforcement work on Internet domain names. Mr. Baum represented a broad cross-section of clients from the publishing, luxury goods, interactive entertainment, personnel staffing and home furnishings industries. He was a member of the firm’s Trademark, Copyright & Advertising and IP Litigation Practices and the Technology Industry Team.

Prior to joining Foley, Mr. Baum was a partner and managing principal with Darby & Darby P.C., where he represented major clients in trademark and copyright litigation, oversaw the management of international trademark portfolios, and supervised the intellectual property aspects of significant corporate transactions.

Representative Experience


Major cases include one in which he helped lead a team which defeated a $150 million damage claim for false advertising in a three-week jury trial, and successfully defended the verdict on appeal to the Eleventh Circuit. In 2013, Mr. Baum secured summary judgment dismissing a trademark infringement case brought against Foley’s client the New York Jets. In 2014, he argued and won the appeal before the Fifth Circuit.