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IP Issues in Business Transactions 2019

Speaker(s): Andrew Baum, Angela J. Grayson, CIPP/US, CLP, Audra A. Dial, Debra A. Dandeneau, Eleanor M. Lackman, Eric A. Prager, Gail H. Zarick, Jack D. Slobod, Jami Mills Vibbert, Jeffrey D. Neuburger, Jeffrey D. Osterman, Jim Lennon, Joel Wolfson, Jonathan M. Seiden, Kenneth K. Cho, Kim Youngberg, Maria A. Scungio, Martin Köhler, Melvin C. Garner, Ricardo P. Fischer, Zhun Lu
Recorded on: Jan. 7, 2019
PLI Program #: 249508

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.

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

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.


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

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

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.

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

New York
U.S. Patent & Trademark Office

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

JACK D. SLOBOD has been employed by One-Blue, LLC, a standard essential patent pool for Blu-ray products, as its General Counsel for 7 years. In that capacity, he is responsible for patent pool management and governance issues, patent licensing agreements and negotiations, litigation management and antitrust issues.

Prior to joining One-Blue, he was employed by Philips Intellectual Property & Standards for 23 years, lastly as Principal IP Counsel.  Mr. Slobod was responsible within the Consumer Lifestyle and Corporate Technologies Sectors for licensing-out patents and other intellectual property rights of Koninklijke Philips Electronics N.V., litigation management, transactional matters, and defense of third party IP claims.   He was formerly lead IP counsel for various product divisions of Philips.

Prior to joining Philips, he was in the private practice of law for several years in small general practice firms, where he concentrated in intellectual property law and business and commercial transactions.

Mr. Slobod also practiced law in an Arlington Virginia patent law firm, and at the National Aeronautics and Space Administration.  Prior to that, he worked for several years as an engineer and member of the technical staff of various companies.

He holds B.E.E. and M.E.E. degrees from City College of New York, and a J.D. degree from George Washington University, where he was a member of Order of the Coif.

Mr. Slobod is admitted to the New York Bar and is a Registered Patent Attorney.   He is a member of the Antitrust Committee and the Standards and Open Source Committee of the American Intellectual Property Law Association.  He is also a member of the Litigation Committee and former member of the Board of Directors of the New York Intellectual Property Law Association.  Mr. Slobod was a former Chairman of the Standard Setting Committee of the Intellectual Property Owners Association.

Jami Mills Vibbert is a member of Venable's eCommerce, Privacy, and Cybersecurity Group who conducts comprehensive data security risk assessments and develops and implements data risk solutions, information security programs, and breach prevention and incident response plans.  Jami also engages in crisis management and breach notification and related investigations and litigation, with extensive experience helping companies prepare for and respond to security incidents.

Jami also assists companies developing new technologies engage in privacy and security by design fundamentals and evaluate data risk associated with such new technology, including by participating in the Texas Medical Center's Innovation Institute as an Expert Advisor.

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.

While many intellectual property lawyers can claim a background in science, few can claim a previous career in geology. Jim Lennon sees this as a competitive advantage. As geologists must be thoroughly trained in a range of disciplines — especially chemistry, physics, and biology — this grounding gives Jim an unusually multi-dimensional, “big picture” perspective that he brings to both patent transactions and litigation. His clients in the pharmaceutical, chemical, and materials industries have long recognized his ability to absorb a wide variety of esoteric scientific concepts, and to interpret those concepts for non-technical audiences.

To Jim, a client’s IP strategy can only be effective in the context of the company’s overall business objectives. As patent law continues to be redefined, often by the Supreme Court, he advises clients on all their available options, sometimes even eschewing patents in favor of other forms of protection. He views litigation similarly, as a strategic decision whose ramifications — legal, financial, and reputational — must be thoroughly weighed for business efficacy, and either pursued or settled accordingly.

Jim often acts as Delaware co-counsel in major patent litigations, yet his role is anything but passive. Judges in the United States District Court for the District of Delaware place a premium on both brevity and clarity in written materials, and Jim is known as a savvy reviewer of his co-counsel’s written submissions. He regularly provides valuable insights into the workings of the court, strengthening the work product for maximum impact and optimal results.

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 the immediate 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 Vice Chair of AIPLA Diversity in IP Law Committee, and she serves on the Executive Committee of the Intellectual Property Law Section of the Mississippi Bar.

Ms. Grayson serves on the Women’s Empowerment Center Executive Advisory Council.

She was most recently appointed to the Board of Directors for the Rogers-Lowell Area Chamber of Commerce. 

In her free time, Ms. Grayson enjoys serving her community and spending time with her husband Patrick and their two cocker spaniels, Ari and Archi (aka the Dynamic Duo).

Ricardo Fischer is the Trademark Practice Leader in the Washington, D.C. office of Arent Fox LLP specializing in international distribution and market entry counseling to companies operating in Europe, Latin America and the Caribbean, and to US companies entering those markets.

As the leader of the firm’s internationally recognized Trademark practice, and a dual civil and common law attorney who has practiced law in Latin America and the United States, Ricardo offers a unique perspective to help clients expand their businesses. 

Ricardo advises international brands on corporate, regulatory, and intellectual property matters including but not limited to negotiations of commercial and distribution agreements; analysis and settlement of distribution termination claims, license agreements, analysis, and risk assessment; product claims, labeling and advertisement restrictions; cases before national advertisement review boards; due diligence in the acquisition of tangible and intangible assets; an array of intellectual property issues including protection, enforcement, unfair competition, and regulatory licenses for research and development; and risk assessment on product claims, labeling, and advertisement restrictions.

Ricardo's diverse client base includes companies in the retail, fashion, food and beverage industries, such as Inditex, Zara, Massimo Dutti, Guru Denim, Mars and Juan Valdez Café.

Ricardo is admitted in New York and Venezuela. He is also admitted as a Special Legal Consultant by the District of Columbia Bar and is supervised by principals of the firm.

Ricardo is a member of the Executive Committee of the Interamerican Association of Intellectual Property (ASIPI) and previously chaired its Internet Committee. He has also served in various committees at the International Trademark Association (INTA).

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 was 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.

Kim Youngberg is a transactional attorney in entertainment and advertising. As General Counsel at Screenvision Media, the second largest cinema advertising company in the US, she is in charge of all legal matters including negotiating deals with movie theaters and advertisers, structuring business development, marketing, research and promotions agreements, and securing and drafting independent film distribution agreements. Ms. Youngberg helps expand the company’s business into new social media platforms, beacon technologies, geo-targeted advertising, programmatic advertising, gaming, virtual reality, and influencers.

Prior to joining Screenvision Media, Ms. Youngberg served as the SVP of Business and Legal Affairs for Wind-Up Records, one of the largest independent record labels in the US, where she oversaw all legal matters for the company’s record label, several publishing companies, and a full-service merchandising company. Before joining Wind-Up, Ms. Youngberg was in private practice at Davis Shapiro & Lewit, a boutique music law firm, where she represented many superstar recording artists, producers and writers, as well as major and independent record labels and publishers. Right after law school she was an associate at Bermans, a firm of English barristers and solicitors, where she practiced in international litigation.  

Ms. Youngberg graduated from Fordham University School of Law, and has a BBA from the University of Michigan.

Maria Scungio is based in the firm’s New York office and has more than 20 years of experience managing worldwide trademark portfolios—including both protection and transactional matters—for well-known brands. 

Maria’s practice includes counseling clients in the fields of apparel, footwear, jewelry, food and beverage, pharmaceuticals and nutritional products, tobacco and e-cigarette products, and music and entertainment publishing. She advises on strategic issues affecting the exploitation, enforcement, acquisition, divestiture and realignment of intellectual property rights, including copyrights and design rights. She also provides counsel on trademark availability, bringing counterfeit and infringement actions, and initiating opposition and cancellation actions.

Maria has partnered with clients to serve as interim in-house intellectual property counsel during corporate transitions. She has litigated cases before federal courts and the Trademark Trial and Appeal Board, acting for plaintiffs and defendants, involving trademarks for diverse consumer products and communication services.

Prior to joining Wolf Greenfield, Maria served as co-chair of the Trademark, Copyright and Advertising Group at the law firm Locke Lord. She began her legal career as a law clerk to the Honorable Jane A. Restani in the US Court of International Trade in New York.

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.