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IP Issues in Business Transactions 2017


Speaker(s): Andrew Baum, Angela J. Grayson, CIPP/US, CLP, Audra A. Dial, Carolyn H. Blankenship, Clark W. Lackert, Dr. Lothar Determann, Eleanor M. Lackman, Eric A. Prager, Gail H. Zarick, Jeffrey D. Neuburger, Jeffrey D. Osterman, Joel Wolfson, Jonathan M. Seiden, Kenneth K. Cho, Mark S. Raskin, Melvin C. Garner, Philippe Claude, Ricardo P. Fischer, Steven I. Weisburd, Vineet Shahani, Zhun Lu
Recorded on: Jan. 9, 2017
PLI Program #: 184269

Lothar Determann practices and teaches international technology, commercial and intellectual property law.

At Baker & McKenzie LLP in San Francisco and Palo Alto, he has been counseling companies since 1998 on data privacy law compliance and taking products, business models, intellectual property and contracts international. He is admitted to practice in California and Germany. He has been recognized as one of the top 10 Copyright Attorneys and Top 25 Intellectual Property Attorneys in California by the San Francisco & Los Angeles Daily Journal and as a leading lawyer by Chambers, Legal 500, IAM and others. For more information see www.bakermckenzie.com.Prof. Dr. Determann has been a member of the Association of German Public Law Professors since 1999 and teaches Data Privacy Law, Computer Law and Internet Law at Freie Universität Berlin (since 1994), UC Berkeley School of Law (Boalt Hall, annually since 2004), Hastings College of the Law (since 2010), Stanford Law School (2011) and University of San Francisco School of Law (2000-2005). He has authored more than 100 articles and treatise contributions as well as 5 books, including Determann’s Field Guide to Data Privacy Law (2nd Edition, 2015) and California Privacy Law - Practical Guide and Commentary (2nd Ed. 2017).


Audra Dial is the Managing Partner for Kilpatrick Townsend’s Atlanta office and specializes in patent, trade secret and complex commercial litigation involving technology.

Ms. Dial has obtained favorable verdicts in many high-profile intellectual property disputes, including on behalf of several Fortune 500 companies. She has represented companies whose intellectual property was misused both domestically and abroad.

Ms. Dial graduated cum laude from The American University in 1994 and William & Mary School of Law in 1998.  She served as Managing Editor of the William & Mary Law Review while in law school.

She has received numerous accolades for her leadership and community service including recognition by the Atlanta Business Chronicle as a Woman Who Means Business, by the Daily Report in its 2014 Verdicts Hall of Fame for intellectual property litigation and by the State Bar of Georgia and the Georgia Supreme Court Chief Justice’s Commission on Professionalism with a Justice Robert Benham Community Service Award and serves on several non-profit boards, including the Fernbank Museum Corporate Leadership Council and the Board of Directors for Leadership Atlanta.


Eleanor M. Lackman is a nationally recognized practitioner in copyright, trademark, and media and entertainment law.  Her practice encompasses media and entertainment defense, copyright and trademark litigation and counseling, and trademark branding, prosecution, and licensing.  Major brand owners in a wide range of industries entrust her with their branding, counseling, licensing, prosecution, and enforcement needs, while the media and entertainment industries routinely call on her to draft amicus briefs in some of the most closely watched copyright cases in the country.  She splits her time between the firm’s New York and Beverly Hills offices.

Eleanor has been ranked as a leading lawyer by Chambers USA in copyright and trademark law for each of the past six years.  She has been recognized as a Global IP Star and one of the top women in IP by Managing IP, has been repeatedly named by Super Lawyers as one of the top 50 women attorneys in the New York area, and has been recognized on multiple occasions by Variety Magazine for her work in the entertainment industry.  Her outside-the-box approaches to legal practice has also garnered her recognition as a “Trailblazer” twice by the National Law Journal.

Eleanor is a past co-chair of the New York Chapter of the Copyright Society of the USA, to which she now serves as a trustee.  She presently is serving her second term on the Amicus Committee of the International Trademark Association (INTA). 

Prior to joining CDAS in 2011, Eleanor worked at Hogan Lovells, Arnold & Porter, and Loeb & Loeb.  She received her A.B. degree, with honors, from Rollins College, and her J.D. from Fordham University School of Law, where she was the recipient of the Milton Pollack Fellowship.  Eleanor is admitted to practice in New York and California.



Eric A. Prager, a partner in the firm’s intellectual property practice group, assists clients with all types of intellectual property issues. His practice involves contentious and non-contentious work, including strategic counseling, due diligence of IP assets, sophisticated licensing and agreement work, and litigation. He has litigated copyright, false advertising, patent, trademark and trade secret cases in courts around the country.

 With significant experience in the area of digital content distribution and protection, Eric represents one of the Big Three record companies and a major online subscription music service in their digital content matters. 

 Eric assisted in drafting several “digital agenda” copyright treaties for the World Intellectual Property Organization, including the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  He has also served on the U.S. Patent and Trademark Office Public Advisory Committee for Trademark Affairs.

 Eric serves as an adjunct professor at Fordham Law School in New York co-chairs the New York version of this PLI program.


Jeffrey Osterman is a partner in Weil’s Technology & IP Transactions practice and concentrates on matters with deep commercial or technical complexity. He has had extensive experience with pure patent licensing, technology transfer, outsourcing, technology integration, content licensing and merchandising.

Mr. Osterman recently advised Sanofi in its worldwide exclusive licensing agreement with MannKind Corporation to develop and commercialize Afrezza (insulin human) Inhalation Powder; Verizon in connection with the acquisition of cloud TV technology from Intel; Lenovo in connection with the acquisition of Motorola Mobility from Google; and Mubadala and Sony/ATV in connection with the proposed $2.2 billion acquisition of EMI Music Publishing. Mr. Osterman also regularly represents Panasonic in connection with a wide variety of transactional matters involving consumer electronics and GE in connection with the IP aspects of numerous corporate transactions. He also counsels clients with respect to their rights under existing agreements and the development of new technologies.

Mr. Osterman lived in Japan from May 1997 to May 1998 where he worked in-house on loan to the headquarters of Panasonic Corporation.

Mr. Osterman is a member of the State Bar of New York and is admitted to practice before the United States Patent and Trademark Office. He has appeared on national television and lectured on intellectual property, electronic privacy and e-commerce throughout the United States and on U.S. intellectual property and contract law in Japan. He is also the Vice Chair of the IP Licensing Committee of the Intellectual Property Owners’ Association and is active in the open source legal community.

Mr. Osterman has received a number of awards for his expertise including being ranked by Chambers USA and Chambers Global as a national and global leader in the technology and outsourcing fields and by Legal 500 as a leading lawyer in the field of intellectual property. He is also recognized as an “IP Star” by Managing Intellectual Property’s IP Stars for Copyright, Counselling and Licensing, by Best Lawyers in America for Information Technology Law and in IAM Patent 2014.

Education

Harvard Law School (J.D., cum laude, 1995)

Cornell University (B.A., cum laude, 1992)


Mark S. Raskin

Mr. Raskin specializes in intellectual property litigation and transactional work, particularly advising clients regarding licensing matters.  His experience encompasses patent, trademark, trade secret and copyright litigation.  Mr. Raskin started the Patent Litigation Group of Mishcon NY in 2012, building one of the fastest growing patent litigation groups in the U.S.  Over his fifteen year career, Mr. Raskin worked at a premier intellectual property boutique and helped launch the NY office of a Texas-based litigation boutique.

 

Mr. Raskin left law firm practice to help run and act as General Counsel for a 50+ year old engineering and manufacturing company specializing in products for the military and aerospace industries.  He advised the company president on strategic and legal matters, including trade secret, patent, and other intellectual property issues.  He also negotiated multi-million dollar intellectual property transactional matters, customer and supplier contracts (private and governmental) and licensing agreements.  Mr. Raskin investigated, analyzed, and negotiated prospective strategic opportunities for company growth, leading to the sale of intellectual property assets and, eventually, the company’s core business.  His greatest enjoyment and satisfaction stemmed from his opportunities to work with the company’s engineers regarding product development and step in as an additional machinist when necessary.

 

Mr. Raskin also started his own company to sell patented marine safety devices that he co-invented and co-developed, and sold the key intellectual property and manufacturing assets shortly thereafter.  After sales of both companies, Mr. Raskin decided to return to law firm practice and join Mishcon de Reya.

 

Throughout his law firm practice, Mr. Raskin has advised clients on intellectual property matters, from protection and licensing of patents and trade secrets to recommending trademark and copyright strategies.  He has worked on numerous high-profile trade secret, copyright, and patent litigations involving some of the most respected companies in the world, garnering extensive litigation experience, both in district court and before the ITC.  His trade secret and patent matters have implicated various technologies related to medical and analytical devices, chemicals and pharmaceuticals, consumer electronics, computer/video game software and hardware, telecommunications and the Internet.

 

Mr. Raskin attended Washington University, where he earned a B.A. in Biology and Chemistry and an M.A. in Biology.  During his graduate studies, he worked as an intern in the Howard Hughes Medical Institute, Washington University Medical School using recombinant DNA techniques to engineer bacteria to produce the blood protein von Willebrand Factor.

 

He graduated with honors from The George Washington University Law School, where he was a member of a law journal, a member of the joint faculty-student Academic Integrity Committee, and President of the Alternative Dispute Resolution Board.  While in law school, Mr. Raskin interned for The Honorable Robert H. Hodges at the United States Court of Federal Claims in Washington, DC.


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


Primary Areas of Practice: 

Commercial and product counseling

 

Law School/Graduate School: 

Georgetown University Law Center

 

Vineet Shahani is Director, Legal at Nest Labs in Palo Alto, CA and has been at Nest since 2013, prior to Google's acquisition of Nest in 2014. At Nest, Vineet provides legal counsel for engineering/supply chain transactions, product issues, marketing strategy, international expansion, governance issues, and a wide range of strategic and operational matters. Prior to Nest, Vineet was Sr. Legal Counsel (WW Operations/Products) at Apple Inc., where he advised on visible product matters and transactions around the world related to Apple's global supply chain. Prior to Apple, Vineet was Assistant General Counsel at Enova International, a financial technology firm based in Chicago, and a corporate attorney with Latham & Watkins LLP, based in the firm's Washington, D.C. and Chicago offices. Vineet received a JD from Georgetown University Law Center and a BBA from the University of Michigan.


Clark joined Reed Smith in 2013 and is a partner in the firm's Intellectual Property Group. His primary focus is on trademark, copyright, domain name, licensing, and anti-counterfeiting, with particular experience in international matters, including litigation in the Supreme Courts of Iceland, Denmark, and South Korea, multiple enforcement actions in China, litigation in Australia, South Africa, Germany, and actions and projects in many other countries. He has worked on numerous U.S. and international conflicts and litigation cases, acquisitions and divestitures involving due diligence for intellectual property assets, and intellectual property portfolio management projects. Clark is consistently considered one of the world’s top trademark lawyers by various rankings.

Clark is a domain name arbitrator for WIPO (World Intellectual Property Organization), and a leading voice on ICANN issues (the Internet Corporation for Assigned Names and Numbers -- the international organization that governs domain names on the internet) and its roll-out of more than 1,000 new generic top level domains (gTLDs) and related Trademark Clearinghouse (TMCH). He has been a consultant to the U.S. Government on implementation of the World Trade Organization TRIPS Agreement concerning trademark, patent, and copyright issues, and counsels in IP areas as diverse as geographical indications, famous trademarks, international IP law and treaties, licensing, and right of publicity/personality.  

Clark has again been chosen by Expert Guides to be in the Top 30 trademark attorneys in the United States for 2015. He was in the last edition in 2013 as well. Clark has been selected by peers for inclusion in the 21st Edition of The Best Lawyers in America in the practice areas of: Litigation - Intellectual Property and Trademark Law. Clark is a New York Super Lawyer 2015 and is listed as one of the Global "Top 25" Trademark Lawyers in "Best of the Best 2015" in The International Who's Who of Trademark Lawyers (2015) and in the 2013 World's Leading Trade Mark Law Practitioners. He has also been included in the New York section of the 2015 edition of the Best Lawyers in America guide. Clark has been very active in professional organizations and has served as President of the U.S. Group of the world’s oldest IP law association, International Association for the Protection of Intellectual Property (AIPPI), founded in 1897. He is the former Chair of the ABA Copyright Division of the Intellectual Property Law Section and separately former Chair of the ABA Trademark Division as well. He is the current 2012-2013 Chair of the INTA Related Rights Committee (covering designs, right of publicity, geographical indications, and indigenous rights), has chaired other INTA committees, including the Amicus Brief Committee, External Affairs Committee, Issues and Policy Committee, Geographical Indications Committee, and the International Bulletin Committee, as well as the INTA Presidential Task Force on Online Liability. He was also a member of the Executive Committee of the INTA Board of Directors. In addition, Clark is a member of ASIS (American Society of Industrial Security) International, the preeminent security professional organization, due to his work in global brand enforcement and anti-counterfeiting.

Clark is a frequent speaker on trademark and domain name topics, and has lectured on six continents to various professional groups including the China Trademark Association - CTA, the Brazilian Intellectual Property Association – ABPI, the Institute of Patent and Trademark Attorneys of Australia – IPTA, the AIPPI South Africa, the U.K. Institute of Trade Mark Attorneys (of which he is a long standing member), the Coalition of Intellectual Property Rights – CIPR (in both Moldova and Russian Federation), and many others. He had also presented IP programs to law schools from Yale and NYU on the East Coast of the U.S.A. to USC and University of San Francisco on the West Coast. Clark is also an author of an upcoming chapter on China in a treatise on international IP litigation, an editor of a treatise on trademark assignment and chain of title law and practice, and many other articles involving online liability for trademark infringers and counterfeiters, geographical indications, and famous trademarks, among other topics.

Representative Matters

  • Won an important appellate court decision in the United Arab Emirates concerning trade name and trademark use and registration of a client's corporate name
  • Won a trademark litigation case in the Supreme Court of South Korea
  • Handled many court actions and raids in China
  • Counseled on global requirements for an international trademark licensing initiative of a multinational client
  • Worked with a name generation firm to analyze trademark availability and suitability for a global rebranding project for a major U.S. corporation.

Publications

  • "Cybersecurity's Weapon of Choice - Companies are advised to use their IP rights to counter cyberthreats.," Corporate Counsel, May 2015
  • "Counterfeits and infringements online - a global overview of liability," World Trademark Review, January 2014
  • "Inside the Minds: Defending Intellectual Property Rights in China (Co-Author)," Thomson Reuters, September 2013
  • "Pharmaceutical Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 21, October/November 2009
  • "Non-Traditional Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 20, August/September 2009
  • "Trademark Enforcement - U.S. (Co-Author)," World Trademark Review, Issue 19, June/July 2009
  • "Advanced Trademark Prosecution Issues," World Trademark Review, Issue 18, April 2009
  • "Internet Issues for Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 17, February/March 2009
  • "Protection for Unregistered Trademarks - U.S. (Co-Author)," World Trademark Review, Issue 16, November/December 2008
  • "Chinese Domain Names in the 21st Century," Asia Law, April 2007
  • "IP Rights May be Used to Combat Internet Fraud (Co-Author)," The National Law Journal, April 2004
  • "The Madrid Protocol: Mechanics, Strategies, and Beyond," National Legal Center for the Public Interest, August 2003
  • "Famous Marks Dilution - Does the U.S. Meet TRIPS Standards? (Co-Author)," NYLJ, May 2002
  • "Famous Marks," International Quarterly, Volume 10, April 1998
  • "Geographical Indications: What Does the WTO TRIPs Agreement Require?," Trademark World, 1998
  • "Worldwide Trademark Transfers (Editor)," International Trademark Association (INTA), 1998
  • "Intellectual Property Rights Reform in the Middle East," Middle East Commercial Law Review, 1996
  • "International Efforts Against Trademark Counterfeiting," Columbia Business Law Review, 1988

Speaking Engagements

  • "International Searching and Filing Strategies," Fundamentals of Trademark Law in the Global Marketplace 2015, New York, New York, 14 July 2015
  • "New Legal Issues Impacting IP Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets," IP Issues in Business Transactions 2015, New York, New York, 12-13 January 2015
  • "International Searching and Filing Strategies," Fundamentals of Trademark Law in the Global Marketplace 2014, New York, New York, 15 July 2014
  • Reed Smith at INTA's Annual Meeting 2014, Hong Kong, 10 May 2014
  • "New Legal Issues Impacting IP Transactions: Trademarks, Domain Names, Patents, and Trade Secrets," IP Issues in Business Transactions 2014, New York, New York, 13-14 January 2014
  • "International Searching and Filing Strategies," PLI’s Understanding Trademark Law in the Global Marketplace 2013, New York, New York, 16 July 2013
  • "Global Protection for Famous Trademarks," INTA International Academy, Washington, D.C., 5 May 2013
  • "Special Issues in Copyright and Trademark Law," PLI IP Issues in Business Transactions 2013, New York, New York, 3 January 2013
  • "The Right Mechanics: Trademark Searching and Clearance in a Global Environment," INTA Trademark Administrators Conference, Charlotte, North Carolina, 14-16 October 2012
  • "International Searching and Filing Strategies," PLI’s Understanding Trademark Law in the Global Marketplace 2012, New York, New York, 17 July 2012
  • "Global Protection for Famous Trademarks," INTA International Academy, Washington, D.C., 6 May 2012
  • "IP Practitioner in Residence," Indiana University Maurer School of Law, Bloomington, Indiana, 15 February 2012
  • "U.S. Trademark, Domain Name, and Internet Update," U.S. IP Law Forum, London, 16 November 2011
  • "U.S. Trademark, Domain Name, and Internet Update," U.S. IP Law Forum, Milan, 14-15 November 2011
  • "Online Trademark Infringements: U.S. and International Developments and Best Practices," New Jersey Trademark Counsel Luncheon Club, Basking Ridge, New Jersey, 3 November 2011
  • "International Searching and Filing Strategies," PLI Understanding Trademark Law, New York, New York, 19 July 2011
  • "Fighting Counterfeiting and Trademark Infringement in China," NYIPLA Half-Day Trademark CLE Program, New York, New York, 14 June 2011
  • "Global Protection for Famous Trademarks," INTA International Academy, San Francisco, California, 14 May 2011
  • "AdWords: A Comparative Analysis," Fordham Annual IP Conference, New York, New York, 29 April 2011
  • "EU & US Trademark Dilution," Fordham Annual IP Conference, New York, New York, 28 April 2011
  • "Handling Complex Prosecution Issues," INTA Roundtable, Irvine, California, 15 April 2011
  • "IP Practitioner in Residence," Indiana University Maurer School of Law, Bloomington, Indiana, 29-30 March 2011
  • "The Intersection of Trademark and Copyright and the Right of Publicity," USC Gould School of Law 2011 IP Institute, Beverly Hills, California, 22 March 2011
  • "Global Brand Protection Against Online Infringements," Bird & Bird LLP, Milan, 16 February 2011
  • "Global Brand Protection Against Online Infringements," ITMA London Evening Meeting, London, 15 February 2011
  • "Legal Remedies Available for Brand Owners in the United States," INTA U.S.P.T.O. Study Tour on I.P. and Enforcement for Latin American Judges, New York, New York, 3 November 2010
  • "Global Brand Protection Against Online Infringements," ACC-NY CLE Program, New York, New York, 2 November 2010
  • "Trademarks," Korea Electric Association (KEA) IP Seminar, Seoul, 28 September 2010
  • "Trademark Law (US) Committee: Use and Abuse of Trademarks on the Internet," IPO Annual Meeting, Atlanta, Georgia, 13 September 2010
  • "Global and U.S. Trademark Enforcement and Anti-Counterfeiting Issues," USPTO Global Intellectual Property Academy and the Thai Central IP and International Trade Court Seminar on Enforcement of Intellectual Property Rights, Alexandria, Virginia, 16 August 2010
  • "International Searching and Filing Strategies," PLI’s Understanding Trademark Law 2010, New York, New York, 20 July 2010
  • "Famous Marks Doctrine from a Global Perspective," INTA Famous and Well Known Marks Committee, New York, New York, 20 July 2010
  • "Challenges in Protecting Foreign GIs in the U.S. as well as AOPs in Foreign Jurisdictions," ORIGIN Conference - American Origin Products (AOP) Economic and Legal Perspectives, Washington, D.C., 3 June 2010

Employment History

  • 2013 - Reed Smith
  • 2010 - Dickstein Shapiro
  • King & Spalding

Education

New York University, LL.M., Trade Regulation
State University of New York at Buffalo, J.D.
Cornell University, A.B., cum laude

Professional Admissions / Qualifications

New York

Court Admissions

U.S. District Court - Eastern District of New York
U.S. District Court - Southern District of New York
U.S. Court of Appeals - Federal Circuit


Carolyn Blankenship is SVP, Associate General Counsel, Intellectual Property 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 leads the Corporate Legal Innovation, Product and Privacy Practice Group, with a focus on protecting and leveraging 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.


Ricardo Fischer is the head of the Trademark group at Arent Fox. He focuses his practice on a wide array of corporate/commercial, regulatory and intellectual property issues, some domestic but with a main focus in Central, South America, and the Caribbean. Ricardo is admitted only in New York and Venezuela. He is admitted as a Special Legal Consultant by the District of Columbia Bar and is supervised by principals of the firm. Ricardo has been on the board of the Interamerican Association of Intellectual Property (ASIPI), where he also chaired its internet committee and is a current member. He has also served in various committees at the International Trademark Association (INTA).

As a dual civil and common law attorney who has practiced law in Latin America and the United States, Ricardo is in a unique position to help clients navigate their expansion or business into these jurisdictions. He has assisted clients in negotiations of commercial and distribution agreements, analysis and settlement of distribution termination claims, license agreements, analysis, and risk assessment with respect to product claims, labeling and advertisement restrictions, cases before several national advertisement review boards, due diligence, and acquisition of tangible and intangible assets and a wide array of Intellectual Property issues including protection, enforcement, unfair competition, and regulatory licenses for research and development such as GMO’s and genetic access-type research.


Angela J. Grayson is Principal Member and Founder of Precipice IP, PLLC.  Precipice IP, PLLC is a consultancy and intellectual property law boutique specializing in patent, trademark, copyright, and data law. 
 
Prior to founding Precipice IP, Ms. Grayson was most immediately Associate General Counsel, Intellectual Property and Patent Operations Lead at Walmart Stores, Inc.  Prior to joining Walmart, Ms. Grayson had previous experience as in-house patent counsel for several Fortune® 100 companies, as well as prior experience in the examining corps for the United States Patent and Trademark Office. 

Ms. Grayson 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 the immediate past Board Chair of the Minority In-House Counsel Association (MIHCA) and also serves on the Board of Trustees for the American Intellectual Property Law Education Foundation (AIPLEF). She serves as well on the Board of Advisors for Destination Imagination.

Ms. Grayson is also leading the national effort to establish intellectual property pro bono inventor assistance. She serves as on the Board of Directors for the Patent Pro Bono Advisory Council. Ms. Grayson is also the Chair of the AIPLA Special Committee on Pro Bono and she has been appointed to the Executive Committee of the Intellectual Property Law and Entertainment Section of the Mississippi Bar.

In her free time, Ms. Grayson enjoys serving her community and spending time with family.


Gail Zarick serves as IP Counsel for the Security Division of IBM, providing advice and counsel on all IP issues pertaining to an array of IBM Security software and hardware product and service offerings. In other assignments at IBM, she has managed a team of IP attorneys responsible for multiple IBM brands as well as an IP law department responsible for supporting IBM’s Research laboratories and CHQ organizations. She has trained and managed teams of attorneys to conduct legal due diligence for patent sales and large divestitures. She has also negotiated patent assignments and licenses in IBM’s Corporate licensing group and has managed patent litigations in IBM’s Corporate Litigation department. Before joining IBM, Gail practiced intellectual property law at Pennie & Edmonds LLP in New York. 

Admitted to the bar in the State of New York
Registered to practice before the U.S. Patent & Trademark Office

JD, Pace University School of Law
MSE, University of Pennsylvania 
BSE, Princeton University

 


Jeffrey Neuburger is a partner, co-head of the Technology, Media & Telecommunications Group, a member of the Privacy & Cybersecurity Group and editor of the firm’s New Media and Technology Law blog.

Jeff’s practice focuses on technology, media and advertising-related business transactions and counseling, including the utilization of emerging technology and distribution methods in business. For example, Jeff represents clients in blockchain implementations, cryptocurrency-related issues and online strategies associated with advertising, products, services and content. He also represents many organizations in large infrastructure-related projects, such as outsourcing, technology acquisitions, cloud computing initiatives and related services agreements.

In addition, Jeff represents clients in a wide range of privacy and data security matters, including the implementation of policies, the management of information, and responding to situations of potential unauthorized access to personally identifiable information.

Jeff is an Adjunct Professor at Fordham University School of Law teaching E-Commerce Law, and lectures extensively on a range of issues, including computer and e-commerce law, emerging technology developments, intellectual property, outsourcing, privacy and data security. He also is co-author of two books, Doing Business on the Internet and Emerging Technologies and the Law. Founder of the monthly newsletter, New Media, Technology and the Law, Jeff is Editor of Proskauer’s Technology, Media and Telecommunications blog. He also has served on advisory panels to Congress, and is regularly quoted by mainstream general and trade publications.

Prior to practicing law, Jeff began his career working in the information technology field. He completed General Electric Company’s two-year Information Systems Management Program and spent an additional four years in Information Systems Management at GE Capital. His undergraduate degree is in computer science and applied mathematics. Jeff has been recognized as a leading technology lawyer in various publications and directories. Jeff is currently a Trustee on the Board of the Educational Alliance.


Jonathan Seiden is an attorney and business affairs executive with over 10 years of experience sourcing, negotiating, and drafting industry-specific agreements in the fields of entertainment and media. 

As of July 2016, Mr. Seiden serves as Vice President and Counsel for IMG and is responsible for counseling IMG and its clients, including the Miss Universe Organization and IMG Licensing on legal matters, including live events, music, sponsorships, content and intellectual property licensing, digital distribution and merchandising. 

From November 2014 until June 2016, Mr. Seiden served as Senior Vice President, Business and Legal Affairs at SFX Entertainment, Inc. (“SFX”) and Executive Vice President of Beatport LLC (“Beatport”). 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, brand integration and sponsorship deals, new media and content deals, music publishing and master recording agreements, and licensing. 

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.


Kenneth K. Cho is a senior U.S. attorney in the intellectual property practice group of Kim & Chang specializing in patent licensing, litigation and counseling matters. Mr. Cho represents international clients from diverse technology fields such as internet, multi-platform messaging, and software related inventions; semiconductor devices and manufacturing equipment; telecommunication and mobile telephony; LEDs; biomedical devices; optical disc and storage technologies and the like. Mr. Cho spent almost a decade working in-house as the Managing Director of Strategic Alliances and Chief Patent Counsel for a private equity fund dedicated to investing in IP centric opportunities; as the IP Counseling and Acquisition Manager, and a Licensing Officer, of Philips Intellectual Property & Standards for the Consumer Electronics product division of Philips Electronics; and as a patent assertion attorney for AT&T Corp. specializing in offensive patent assertion and licensing matters. Mr. Cho has handled Intellectual Property matters that span the United States, Far East and Europe.

Mr. Cho is a former member of the Board of Directors of the American Intellectual Property Law Association (AIPLA) and a former Chairman of the IP Practice in the Far East committee; a member of the Asia Practice Committee of the Intellectual Property Owners Association (IPO); and a member of the International Association of Korean Lawyers where he formerly served as the chairman of the Board of Directors and former past President of the Overseas (U.S.) chapter. Mr. Cho also served on the Board of Directors for the Korean American Lawyers Association of Greater New York (KALAGNY). Mr. Cho is a trained mediator through the New York State Office of Court Administration. He is admitted to the bars of New York, New Jersey and the District of Columbia, and is also admitted to practice before the U.S. Patent & Trademark office.


Steven Weisburd is a partner in Arent Fox’s Intellectual Property group, where he concentrates his practice in the areas of patent, trademark, copyright and computer law.

Steven represents a diverse roster of clients in technology, in areas including computers, image processing, communications, piezoelectrics, finance, surveillance, and musical instruments.

He has advised some of the largest international companies in negotiating licensing agreements involving hundreds of millions of dollars; litigating patent, trademark and copyright cases before the federal courts; and structuring and carrying out major licensing programs that resulted in the licensing of an entire industry. He also has extensive experience in patent and trademark prosecution matters.

Steven is an active lecturer on IP issues. He is currently the national chair for PLI’s nationally presented program
“Handling Intellectual Property Issues in Business Transactions” and was previously an instructor at the PLI Patent Bar Review course. He has presented lectures on topics such as litigation, intellectual property management and prosecution matters to national and international audiences.


Zhun Lu is a partner in the Wilmington, DE office of Drinker Biddle & Reath LLP and the firm’s Senior Director for Greater China Practice, advising clients on a broad range of IP and business matters in patent counseling, opinions, litigation, and prosecution, primarily in the areas of biotech, biomedical, pharmaceuticals, chemicals, telecommunications, computers, automobile diagnostic tools, and semiconductors.

Zhun is also experienced in corporate matters relating to Delaware business entities, governance, compliance, restructuring, IP management, technology transfer and licensing, international brand protection, IPO and M&A due diligence, commercial dealings, employment, and US antitrust class action litigation.

Zhun has been working with Greater China-based companies entering the US and helping them to expand and sustain their business interests, often acting as their outside general counsel. He also helps US and other international companies operating and doing business in the Greater China marketplace. He is an honorary member of the Chinese Intellectual Property Society and has been a frequent lecturer at law firms, universities, companies, and conferences in China, Japan, Korea, Singapore, and Taiwan. Zhun has been serving as representative for the American Intellectual Property Law Association (AIPLA) to the SIPO/U.S. Bar Liaison Council since 2016 after serving 2 years as Co-Chair of AIPLA’s IP Practice in China Committee.

Zhun graduated cum laude from University of Quinnipiac Law School in 2002. In his last year in law school, Zhun served as an intern for the Honorable Peter Dorsey, the former Chief Judge of the United States District Court of Connecticut. Before attending law school, he was a post-doc fellow and then Associate Research Scientist at Yale University Medical School. He obtained a Ph.D. in molecular biology from Auburn University.


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.


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.