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Advertising Law Institute 2019


Speaker(s): Ashima A. Dayal, Brendan Healey, Brian G. Murphy, Jordan Mitchell Heinz, Liisa M. Thomas, Nerissa Coyle McGinn, Rachel T. Hudson, Randal Shaheen, Robert H. Newman, Sheila A. Millar
Recorded on: Oct. 17, 2019
PLI Program #: 248618

Ashima A. Dayal is a partner in the Advertising, Marketing & Promotions; Entertainment, Media & Sports; Intellectual Property; and Digital Media Practice Groups of Davis & Gilbert. Ms. Dayal is also a member of the firm’s Diversity Committee. Her practice concentrates on advising the firm’s advertising, media  and entertainment clients on all aspects of copyright, trademark, right of publicity, and defamation law. Additionally, she has considerable experience resolving complex issues and disputes raising false advertising, unfair competition, misappropriation of idea, e-commerce and contract concerns, and she regularly participates in all manner of civil litigation (including infringement suits and consumer class actions), government investigations and other adversarial proceedings related to these areas of law. Ms. Dayal has argued before the U.S. Patent and Trademark Office, the U.S. Court of Appeals for the Second Circuit, the Southern District of New York, and the National Advertising Review Board and the National Advertising Division of the Council of Better Business Bureaus. She also counsels clients on entertainment union and guild issues pertaining to television, radio and Internet advertising.

Ms. Dayal negotiates, drafts and reviews a wide array of agreements on both the advertiser and advertising agency sides, including licenses for use of entertainment, fine art and literary materials, production agreements, talent agreements, sponsorship agreements, agency/client agreements and contracts in the new media field. Ms. Dayal has been recognized by The Legal 500 United States in the area of intellectual property: copyright (2014-2017) and in the area of advertising and marketing (2017). She has also been recognized in Media Law International’s rankings (2015-2017) for her work in the area of media law. She is a regular speaker on intellectual property and marketing law issues and has lectured at the Fashion Institute of Technology, Laboratory Institute of Merchandising (LIM College) and Fordham University among others.


Brendan Healey is a Partner at the Chicago law firm of Baron Harris Healey LLC, where he works with clients on media and marketing law issues. Previously, Brendan was Deputy General Counsel, Media for American Media. Prior to joining American Media, he was Senior Counsel, Media and Promotions for Tribune Company, where he counseled the Chicago Tribune Company on marketing law issues and worked with Tribune’s eight daily newspapers as well as other Tribune business units on sweepstakes and contests. Brendan was a partner in private practice before joining Tribune Company. 

Brendan is a 1997 graduate of New York University School of Law, where he was an articles editor on the Law Review. After graduation, Brendan clerked for Boyce F. Martin, II, then the Chief Judge of the United States Court of Appeals for the Sixth Circuit. Brendan graduated with Honors and Distinction from Stanford University in American Studies and also received a Master’s from Stanford in English. Brendan has co-taught Advertising Law as an adjunct faculty member at John Marshall Law School in Chicago as well as legal writing for the intellectual property lawyer as a John Marshall adjunct. 

 


Brian G. Murphy counsels advertising agencies, advertisers, and entertainment companies as they develop and produce advertising, promotions and entertainment content across all media. Mr. Murphy has been named 2018 Attorney of the year for Advertising Law by Best Lawyers.

His practice focuses on copyright, trademark, right of publicity/right of privacy, false advertising, unfair competition, and defamation. Mr. Murphy negotiates and structures celebrity talent agreements, agency-client contracts, sponsorship arrangements, product integration deals, and music, film, and other content licenses. He assists clients in the development and execution of complex contests, sweepstakes, and charitable promotions and programs, including those involving user-generated content that are developed for social media, interactive, and mobile platforms. In addition, Mr. Murphy regularly advises clients on the development and production of branded entertainment projects, such as television shows, films, live events, electronic games, webisodes, mobisodes, and websites.

Mr. Murphy is a frequent and popular speaker on advertising, entertainment, and intellectual property issues. Mr. Murphy is an Adjunct Professor of Law at New York Law School where he teaches courses on entertainment and copyright law. Mr. Murphy previously taught at Fordham University Law School and has lectured at the Parsons School of Design. He is a member of the Copyright Society of the U.S.A.; the Entertainment, Arts & Sports Law Section of the New York State Bar Association; the Promotion Marketing Association; and the American Bar Association Intellectual Property Section’s Special Committee on Promotions and Marketing Law.

Mr. Murphy clerked for the Hon. Leonard B. Sand, United States District Judge in the Southern District of New York. He is admitted to practice in New York. 


Jordan M. Heinz currently practices in both the intellectual property and general litigation departments. Within the intellectual property department, Jordan focuses on Lanham Act litigation (trademark, false advertising and unfair competition) and trade secret litigation across a broad range of industries. Within the general litigation department, Jordan focuses on complex commercial litigation matters, including employment and consumer fraud litigation. Jordan also helps coordinate the Firm’s pro bono program and currently serves as a Chicago Pro Bono Coordinator.

Representative Matters

  • Counsel for technology startup company in two lawsuits alleging the client falsely advertised and violated the Telephone Consumer Protection Act (TCPA). Won early summary judgment in one suit and a voluntary dismissal with prejudice in the other suit after defeating class certification.
  • Counsel for Mammoth Mountain Ski Area in lawsuit alleging violation of the TCPA; matter is pending.
  • Counsel for General Motors in lawsuit allegation violation of the TCPA. Secured favorable settlement for client prior to discovery commencing.
  • Counsel for Alight, Inc., formerly Aon Hewitt, in trademark infringement lawsuit involving house marks.
  • Counsel for Syngenta AG in multi-district litigation alleging false advertising and other claims related to Syngenta’s commercialization of a genetically-modified corn seed.
  • Counsel for Discover Financial Services in trademark infringement lawsuit involving graphic design element brought by ING Bank. Negotiated favorable settlement for client at close of fact discovery.
  • Trial counsel in successful false advertising suit on behalf of Equal no-calorie sweetener alleging that Splenda no-calorie sweetener misrepresented its artificial product as natural and misled consumers.
  • Trial counsel for DIRECTV in false advertising lawsuit related to high-definition picture quality.
  • Lead counsel for transgender individuals in a class action challenging President Trump’s transgender military ban (Karnoski v. Trump et al). Obtained a preliminary injunction against the ban and successfully fought back the government’s appeal opposing an emergency stay of the injunction.


Liisa Thomas is a Partner in Sheppard Mullin’s Chicago and London offices, and Practice Group Leader of its Privacy and Cybersecurity Team.  Her clients rely on her ability to create clarity in a sea of confusing legal requirements and describe her as “extremely responsive, while providing thoughtful legal analysis combined with real world practical advice.”  Ms. Thomas is the author of the definitive treatise on data breach, Thomas on Data Breach: A Practical Guide to Handling Worldwide Data Breach Notification, which has been described as “a no-nonsense roadmap for in-house and external practitioners alike.”  She is known as an industry leader in the privacy and data security space and is consistently recognized by Leading Lawyers Network, Chambers and The Legal 500.  Ms. Thomas was named to Cybersecurity Docket's "Incident Response 30," honoring 30 incident response professionals critical to managing data breaches (in both 2016 and 2018).  Ms. Thomas was recognized as the 2017 Data Protection Lawyer of the Year – USA by Global 100, the 2017 U.S. Data Protection Lawyer of the Year by Finance Monthly, and the “Best in Data Security Law Services” at Corporate LiveWire’s 2017 Global Awards.  She received her J.D. from the University of Chicago in 1996 and is admitted in Illinois and the District of Columbia.


Robert Newman is a partner in the Advanced Media & Technology practice at Loeb & Loeb and is co-chair of the firm’s privacy practice. Mr. Newman is also an adjunct faculty member of Chicago-Kent College of Law and The John Marshall Law School's Center for Intellectual Property, Information and Privacy Law. He teaches courses on advertising and marketing law, e-commerce, and behavioral tracking and targeting. He is also a Lexis Practice Advisor in the areas of marketing and advertising.

Mr. Newman counsels clients in connection with marketing, privacy, data security, e-commerce and other intellectual property matters. He advises major brands, advertising agencies and digital media companies on all aspects of their consumer marketing communications, commercialization and enforcement of intellectual property portfolios, and litigation risk avoidance relating to IP, marketing and emerging technologies.

Named a “Client Service All-Star” by BTI Consulting Group in 2018, Mr. Newman works closely with clients to protect their creative advantages in the following areas:

Data Privacy and Security: Regulatory and compliance counseling, including with respect to behavioral advertising, “big data,” mobile marketing, digital media buy agreements, programmatic advertising, and marketing to children. Mr. Newman frequently handles responses to high profile data breaches and assists clients in the assessment and development of internal data privacy and security policies and procedures.

Advertising, Marketing, and Promotions: Advertising clearance for traditional and interactive advertising campaigns, and counseling on consumer protection issues, design and implementation of promotions, and new media matters, including social media, text message marketing, and user-generated content.

Trademarks and Brand Protection: Trademark selection and clearance, assistance with the development of branding strategies, trademark prosecution, and global trademark portfolios management. Mr. Newman also advises on domain name strategies and gTLD matters.

IP Transactions, Licensing, and E-Commerce: IP matters associated with mergers, acquisitions, outsourcing, transition services, and other significant corporate transactions. In addition Mr. Newman counsels clients on software and mobile application development, end-user licenses, application service provider agreements, and software licensing.

IP Disputes and Litigation: False advertising, copyright, trademark, domain name, defamation, right of publicity, and unfair competition disputes and litigation, as well as UDRP proceedings and matters before the National Advertising Division and the Trademark Trial and Appeal Board.

Talent, Music, and Copyright: Music and content licenses, and high-level talent agreements for use in advertising and branded entertainment. Mr. Newman also counsels content creators and content providers on the protection and commercialization of their music, literary, and other creative properties.


Sheila A. Millar, a partner with the law firm of Keller and Heckman LLP, counsels corporate and association clients on regulatory compliance and public policy issues.  She often appears before federal, state and international legislative and regulatory bodies. 

Ms. Millar advises clients on an array of advertising, labeling, marketing and privacy issues. She assists clients on claims and claim substantiation development and reviews. Ms. Millar’s extensive experience in privacy, data security and cybersecurity matters includes advising clients on privacy policies, data access procedures, trans-border data flows, privacy and data protection impact assessments, and data breach response procedures. She assists clients on digital media issues, helping them develop social media, blogging and user-generated content policies, as well as advertising technology and online behavioral advertising issues.  Ms. Millar also works with clients to navigate the array of federal and state requirements governing contests and sweepstakes, and advises on gift and loyalty cards, coupons and rebates. 

Ms. Millar also counsels consumer product and industrial manufacturers, distributors and retailers on risk management and product safety strategies, including issues related to connected products such as toys, appliances, fitness products, and medical devices. 

She represents clients on advertising and privacy matters before the Federal Trade Commission (FTC), the National Advertising Division (NAD), and the Children’s Advertising Review Unit (CARU), as well as in connection with investigations by state regulatory bodies and Attorneys General.  Ms. Millar also advises on compliance with laws administered by the Consumer Product Safety Commission (CPSC), as well as green chemistry and other product safety laws.

Ms. Millar is a vice chair of the International Chamber of Commerce (ICC) Marketing and Advertising Commission, and chairs its Working Group on Sustainability and is a long-time advocate for advertising and privacy and self-regulation. Ms. Millar is a frequent speaker and author. 


Nerissa Coyle McGinn’s practice focuses on matters involving the convergence of advertising and promotions, emerging media, technology, privacy and intellectual property law. She has particular experience advising on matters involving the Children’s Online Privacy Protection Act (COPPA) and the Children’s Advertising Review Unit (CARU).

Nerissa works with many of the best-known brands in the country, including H&R Block and the Wm. Wrigley Jr. Co. and its confection brands. Embracing a business-minded approach, she helps clients develop new brand assets and assists them in promoting and advertising their brands and products.  

Clients — including Turner Broadcasting and its programming properties, for which she handles trademark clearances for new shows, web properties, interstitials and sweepstakes — regularly turn to Nerissa for trademark counseling services.   

In the advertising and promotions facet of her practice, she works with clients on sweepstakes review, copy review, and promotion design and fulfillment, with an emphasis on internet and interactive advertising and promotions. 

Her diverse roster of clients includes advertising agencies, large corporations, and professional sports teams including the New York Giants, the Chicago Bulls and the Detroit Red Wings. 

Nerissa also provides legal services for digital companies and app developers, handling a variety of IP matters and privacy policies and practices relating to websites and mobile applications. 

As a thought leader in her industry, Nerissa frequently speaks at events and conferences. She also serves as the firm’s first chief diversity partner and co-chair of the Diversity Committee, overseeing and revamping diversity policies and initiatives.


Rachel Tarko Hudson is a partner in the Intellectual Property Practice Group in the firm's San Francisco office.

Areas of Practice

Advertising

Rachel advises clients in conducting advertising campaigns, contests and sweepstakes, and cause marketing campaigns.  She also counsels clients on compliance with e-mail, telephone, and SMS marketing regulations.

Technology and Commercial Transactions

Rachel drafts and negotiates agreements for software, SaaS, technology services, logistics, marketing, outsourcing, intellectual property licensing, sourcing and distribution agreements, and other commercial and transactional matters.

Privacy and Data Security

Rachel counsels clients on compliance with domestic and international privacy laws, including in Canada and the EU. She helps clients with drafting privacy policies and online terms of service for websites and mobile applications. She counsels clients experiencing data security breaches on response, notification, and mitigation.


Randy Shaheen has more than 30 years of experience as an advertising attorney. A member of BakerHostetler's Advertising, Marketing and Digital Media team, he represents clients before a variety of regulatory agencies, including the Federal Trade Commission (FTC), Consumer Financial Protection Bureau (CFPB), National Advertising Division (NAD) and state attorneys general, and he is sought after for his handling of multijurisdictional matters. Randy's background facilitates practical insight: He has a significant history with matters related to privacy and data security, marketing to children, "green" claims, dietary supplements, claims of weight loss and health and performance, comparative claims, the use of surveys and "Made in the USA" claims.

Select Experience

  • Represented numerous companies with respect to counseling and Federal Trade Commission (FTC) investigations related to the Children’s Online Privacy Protection Act (COPPA).
  • Represented a variety of leading companies in the hospitality industry with respect to counseling and FTC investigations related to drip pricing.
  • Represented diverse companies -- including the manufacturer of the nation's best-known yogurt brand, and a top provider of network infrastructure -- on multi-pronged federal/state investigations and coordinated settlements.

Admissions

  • District of Columbia

Education

  • J.D., Harvard Law School, 1985, magna cum laude
  • B.A., Bucknell University, 1982