Skip to main content

Understanding the Intellectual Property License 2017


Speaker(s): Barry I. Slotnick, Bruce R. Ewing, Christopher R. Chase, David Rabinowitz, Jeffrey D. Osterman, Kristin Neuman, Lindsey J. Canning, Nicholas Vogt, Ryan T. Colgan, Stuart M. Riback, Susan Progoff, Willard K. Tom
Recorded on: Nov. 6, 2017
PLI Program #: 185547

Barry Slotnick is a nationally recognized copyright litigator who has represented clients in the entertainment, advertising, licensing and merchandising industries in courts throughout the United States.

His clients have included entertainment companies such as SONY/ATV Music Publishing, Bertelsmann, EMI Music, Peer Music, Rainbow Media, Broadcast Music Inc., Sociedad General de Autores y Editores, Shapiro Bernstein & Co., Spirit Music, The Harry Fox Agency and the National Music Publishers' Association.  He also has represented artists and creators such as the Allman Bros. Band, Beastie Boys, Billy Squier, Queensryche, Steven Lutvak, Robert Freeman, David Guetta and the J.R.R. Tolkien Estate.  His representation includes companies such as Anheuser-Busch, CKx, Dell Computers, DDB Worldwide, Eveready Battery, Motorola, Toyota and Harley Davidson.

Mr. Slotnick has litigated scores of copyright infringement cases as well as numerous matters in the entertainment industry addressing the respective rights of copyright and trademark owners and users, including numerous cases involving rights of privacy and publicity.

As a frequent speaker, Mr. Slotnick regularly contributes on copyright and entertainment issues for the Practicing Law Institute and other industry groups.

Practice Areas

  • Intellectual Property
  • Entertainment and IP Litigation
  • Litigation
  • Advertising and Promotions
  • Music Industry

Education

Syracuse University College of Law, J.D., 1972, With Honors

Queens College, B.A., 1968


Christopher R. Chase is a partner at Frankfurt Kurnit where he practices intellectual property, advertising, sports, and entertainment law.

He counsels entities and individuals in the advertising and entertainment industries on all aspects of their businesses, including rights clearance (such as copyright, trademark, and rights of publicity), regulatory matters, and risk assessment. He structures and negotiates creative services agreements, commercial production agreements, brand and celebrity licensing agreements, sponsorship and event promotion agreements, celebrity talent and on-camera agreements, content distribution agreements, media agreements, and content releases and licenses. He also counsels clients regarding potential and actual litigations arising out of commercials, print advertisements, sweepstakes, contests, and other promotions, magazines, films, and television productions. Further, he has vast experience addressing music issues, including structuring and negotiating master use and sync licenses for commercials, video games, television productions, and films, music distribution agreements, artist/band services, appearance, and promotion agreements, and concert sponsorships.

Additionally, he works with numerous clients in the sports industry, including counseling major sports leagues on branded entertainment, intellectual property, and promotional matters; advising both sponsors and properties on the structure and negotiation of sponsorship and endorsement arrangements; counseling agency clients that activate sponsors’ marketing campaigns; advising major sports apparel, footwear and fitness companies on marketing campaigns and IP matters; and advising soccer players on transfer agreements. Mr. Chase has been quoted in Sports Business Journal, The New York Times, The Washington Post, USA Today, and The Associated Press on various legal issues and is a founder of the firm’s sports law group.

Mr. Chase’s practice also includes counseling entertainment, advertising, sports, media, and fashion industry clients on the clearance, selection, maintenance, and enforcement of trademarks worldwide, as well as prosecuting trademark applications before the U.S. Patent and Trademark Office and participating in actions before the Trademark Trial and Appeal Board.

Mr. Chase is a member of the Entertainment, Arts and Sports Law Section of the New York State Bar Association, the Sports Lawyers Association, the International Trademark Association, and the Copyright Society of the U.S.A. Prior to joining Frankfurt Kurnit, Mr. Chase was a litigation associate at Clifford Chance Rogers & Wells LLP.


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)


Kristin Neuman is Executive Director for Biotechnology Licensing at MPEG LA, the world’s leader in the management of patent pools and other collaborative licensing programs.  In this capacity, Kristin leads the MPEG LA initiative to form a patent pool for the gene editing technology known as CRISPR-Cas9.  In addition, she manages a university collaboration for translational research and licensing of new therapeutic compounds, and leads business development efforts surrounding patent pool licensing in a variety of other areas including biotechnology, biopharma, synthetic biology, regenerative medicine, and medical devices.

Prior to joining MPEG LA, Kristin was an IP lawyer in private practice in New York City.  She focused on IP litigation, patent prosecution, and commercial transactions throughout life sciences, consumer products, and medical devices.

Kristin received a B.A. in Biochemistry from The University of Colorado, Phi Beta Kappa.  She received a J.D. from Georgetown University Law Center, and clerked for the late Honorable Roger B. Andewelt of the U.S. Court of Federal Claims.


Ryan Colgan is a Vice President and Deputy General Counsel at NTTA America, Inc., a subsidiary of NTT Communications, its Japanese parent.  Prior to joining NTT America in 2013, Ryan was Senior Corporate Counsel at T-Systems North America (a subsidiary of Deutsche Telekom) for nearly two years.  A graduate of Northwestern University Pritzker School of Law, Ryan started his practice with Fish & Neave in 2001, which later merged with Ropes & Gray LLP, where he remained until 2011.

Ryan’s practice has spanned a number of different areas with a focus on intellectual property (litigation, prosecution, licensing), mergers and acquisitions, telecommunications and IT technology, IT outsourcing, and sports and entertainment.


Stuart Riback is a business litigator who has handled a wide range of high-stakes and novel disputes in the course of his 30-year career, with an emphasis on reaching practical solutions to complex business conflicts. Stuart's practice has taken him to the United States Supreme Court, where he argued a case that helped to define the scope of trade dress protection under the Lanham Act, as well as federal courts of appeal and trial courts all over the country. Cases he litigated led to new rulings on the scope of § 13(d) of the 1934 Act in the Eleventh Circuit and the scope of arbitration clauses in the Delaware Court of Chancery.

Stuart is a 1984 graduate of Columbia Law School, where he was a Developing Editor of the Columbia Law Review. Before entering private practice, Stuart served as a law clerk to Judge Peter K. Leisure of the United States District Court for the Southern District of New York. Stuart is co-Vice Chair of the Business and Corporate Litigation Committee of the ABA Business Law Section. He publishes and speaks extensively on topics including corporate privileges, cross-border litigation, intellectual property, creditors rights and arbitration.


Willard K. Tom is a partner in Morgan Lewis's Antitrust Practice. He has worked in the antitrust field for more than 35 years, both in private practice and in government.

Will has served in a number of policy positions in government, including:

  • General Counsel of the FTC, where he was the agency's chief legal officer andadvisor
  • Deputy Director of the Bureau of Competition of the FTC, where he oversaw nonmerger enforcement, patent-antitrust cases, healthcare, policy development, and the competition enforcement of the FTC's regional offices
  • Head of the Bureau's policy office
  • Counselor to the head of the Antitrust Division of the DOJ, where he had responsibility for intellectual property, vertical restraints, and telecommunications matters
  • One of the two principal drafters of the DOJ and FTC's 1995 “Antitrust Guidelines for the Licensing of Intellectual Property”

Will has been a member of the District of Columbia Federal Judicial Nominations Commission, member of the Council of the American Bar Association's Section of Antitrust Law and Section of Business Law, and member of the American Law Institute and of the Administrative Conference of the United States.  He has spoken at the the Asian Competition Forum; the Organization for Economic Co-operation and Development (OECD); the American Intellectual Property Law Association (AIPLA); the Intellectual Property Owners; FTC/DOJ joint workshops; the International Association for the Protection of Intellectual Property (AIPPI); and various events in London, Brussels, Beijing, Shenzhen, Guangzhou, Hong Kong, Seoul, Taipei, and Tokyo.

Will received his J.D., cum laude, from Harvard Law School in 1979 and his A.B., cum laude, from Harvard College in 1975.


Bruce is the head of the Trial Department in the New York office and Co-Chair of the Firm’s Intellectual Property Litigation Practice Group. His principal area of focus is in the litigation of intellectual property disputes, primarily in the fields of trademarks and copyrights. He has represented numerous companies, both large and small, in the prosecution and defense of claims for trademark and trade dress infringement, trademark counterfeiting, trademark dilution, cybersquatting, copyright infringement and false advertising.

Bruce also focuses on commercial disputes involving intellectual property, with a particular focus on licensing matters. Bruce has represented numerous suppliers and manufacturers of apparel, accessories, jewelry and related items, as well as theatrical producers, publishers and entertainment figures, in commercial cases involving claims for breach of contract, fraud, tortious interference and related causes of action.

Other experience includes counseling regarding various intellectual property matters, the prosecution of applications for trademark and copyright registration, licensing matters, the preparation of rules for contests and sweepstakes, and a broad range of general commercial and contract litigation.

Honors

Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property: Trademark & Copyright), 2010-2017

Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2013-2017

Listed in Best Lawyers in America©, 2005-2017

Listed in New York Super Lawyers, 2006-2017

Education

Columbia Law School (J.D., 1992)

Brown University (B.A., 1988)


Lindsey has extensive experience advising clients on intellectual property and technology matters in the context of M&A transactions, IPOs and joint ventures. She also frequently advises clients, on both the customer and supply side, on a wide range of commercial agreements, both in relation to business separations and on a standalone basis. These include IP licenses, supply and distribution agreements, outsourcing contracts and agreements relating to transformational IT projects.

Many of the transactions on which Lindsey advises are cross-border in nature. She is qualified in both the UK and NY, having spent five years working in NYC with her previous firm.


Nick is Associate General Counsel at Verizon Communications in the company’s sourcing and transactional practice group.  Nick maintains a broad, commercial agreement practice at Verizon Communications that involves drafting and negotiating agreements involving advertising, media, software and technology.

Prior to joining Verizon Communications, Nick worked in New York offices of Freshfields Bruckhaus & Deringer and Ropes & Gray / Fish & Neave.  Nick was a member of each law firm’s intellectual property practice group.

Nick received his JD from the University of Notre Dame and his BA (biology) from Rutgers University, magna cum laude.  He is admitted to practice in the states of New York and New Jersey.


Sue is a nationally recognized expert on all facets of trademark, copyright and related unfair competition law.  She has handled all aspects of these areas of the law, including major litigation and major transactions.

Sue is an experienced litigator who has handled many trademark, trade dress, copyright, false advertising, domain name, keyword and other Internet disputes and unfair competition matters, some of which have made new law.  She has acted as lead counsel in suits for such clients as Carter's, Lever Brothers Company, Snapple Beverage Corp., Toy Manufacturers of America, Inc., The Coca-Cola Company, Ford Motor Company, Burberry Limited, Bell's Brewery, Inc., Purdue Pharma L.P., Huntsman Gay Capital Partners and Half the Sky Foundation. She has also designed and implemented anti-counterfeiting programs for clients in such diverse fields as fashion and accessories, semiconductor chips and automotive parts, and represented clients in a multitude of industries in oppositions and cancellation proceedings in the United States Patent and Trademark Office and in ADR proceedings.

In addition to her extensive experience in contested proceedings, Sue brings a pragmatic approach to trademark clearance, prosecution and enforcement in the United States and internationally.  She applies a litigator’s perspective to helping clients minimize the risk of receiving a third party’s objection to the adoption of new marks, while also creating strategies for building brands that strengthen the client’s ability to enforce its rights against infringers.  She has also handled the trademark and copyright aspects of many complex corporate transactions that have depended on the parties’ intellectual property rights, and advised clients on designing and implementing trademark and copyright licensing programs.


David Rabinowitz is co-head of 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)

  • 2017 Practicing Law Institute program, "Ethics for the Negotiating Lawyer"
  • 2017 Practicing Law Institute program, "Advanced Licensing Agreements"
  • 2016 Institute of International Banking Law Standby and Guaranty Forum and Law Summit, “Recent Letter of Credit Cases”
  • 2016 Practicing Law Institute program, "Understanding The Intellectual Property License"
  • 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”
  • 2010 Professional Education Broadcast Network, “Ethics in Negotiations”
  • 2008 Licensing International - "Winning Ethics in Licensing"
  • 2007 Practicing Law Institute program, "Internet Law Institute"
  • 2007 CMJ Music Marathon and Film Festival, “Games Without Frontiers”
  • 2001-2004 Adjunct Professor, Copyright Law, Seton Hall Law School