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Intellectual Property Rights Enforcement 2020

Speaker(s): Amy Hsiao, Angelo E.P. Mazza, Brian W. Brokate, Bruce W. Baber, Craig E. Stone, Erez Liebermann, Hon. Vincent L. Briccetti, John H. Zacharia, Kathleen E. McCarthy, Keara M. Gordon, Lesley Fair
Recorded on: Jan. 16, 2020
PLI Program #: 276834

Brian Brokate is the head of Gibney’s Intellectual Property Practice Group. He guides emerging businesses and leading global brands in developing comprehensive intellectual property protection programs. He designs proactive brand protection strategies to secure their intellectual property in the United States and abroad and help advance their business goals. His work includes enforcement procedures to combat trademark and copyright infringement, civil anti-counterfeiting and infringement litigation and state and federal criminal actions. 

He is partnering with brands to address the rise of counterfeiting during the pandemic, including establishing enforcement priorities, recommending cost-effective protection strategies and working closely with US Customs and Border Protection. 

Brian has been recognized as an industry leader in publications including World Trademark Review and IP Stars, and he is frequently quoted on trends in intellectual property law. He is a speaker and author for PLI, focusing on intellectual property rights and anticounterfeiting enforcement, as well as trade dress trends and protection best practices. 

Brian is a member of Gibney’s Management Committee and he serves on the board of the Intercontinental Grouping of Accountants and Lawyers (IGAL). 

Bruce W. Baber is a senior partner and founding member of King & Spalding’s global Intellectual Property Practice. Mr. Baber is active in all aspects of the firm’s IP practice, with an emphasis on litigation and other contested matters.

Mr. Baber participates actively in both jury and bench trials of patent, trademark, trade dress and copyright infringement litigation matters, as well as adversarial patent, trademark and false advertising proceedings before the U.S. International Trade Commission, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and the National Advertising Division of the Council of Better Business Bureaus. Since he began practice in 1979, Mr. Baber has represented many global and nationally-known companies in dozens of patent infringement, copyright infringement and trademark infringement, dilution and counterfeiting matters, as well as in a wide variety of false advertising disputes. 

Mr. Baber has substantial experience in the protection of trademarks, copyrights and other forms of intellectual property, the prosecution of applications for registration of such properties, and the development and implementation of worldwide protection strategies. He has been involved in numerous major licensing and other intellectual property related corporate transactions, joint venture agreements and marketing agreements.

John H. Zacharia is the Founder of Zacharia Law PLLC, a law firm dedicated to helping clients combat cyber theft and protect and enforce their intellectual property (IP) rights. Previously, as the Assistant Deputy Chief for Litigation of the Computer Crime and Intellectual Property Section (CCIPS) of the United States Department of Justice’s Criminal Division, John was responsible for supervising all of the IP and cybercrime prosecutions by the Section’s 40 attorneys. In his 12 years at CCIPS, John became one of the most experienced federal prosecutors of IP crime in the country.

Notably, John prosecuted and obtained jury verdicts in one of the largest counterfeit goods prosecutions in U.S. history, and he successfully argued for and defended the convictions before the U.S. Court of Appeals for the Fourth Circuit. John also secured a number of “first of its kind” convictions, including the first-ever conviction and sentencing of a cyberlocker operator, and the first-ever prosecution and conviction for criminal copyright infringement of mobile device applications (“apps”).

John is a globally recognized expert in IP law and policy, having worked directly with and trained law enforcement officials from over sixty countries. Before joining CCIPS, John was a trial attorney with the Federal Programs Branch of the Justice Department’s Civil Division, where he personally handled several significant IP cases of first impression, including cases in which he successfully defended against challenges to the constitutionality of the Copyright Act and the Digital Millennium Copyright Act. 

?John has authored and co-authored several articles and studies in the area of IP. Most recently, John co-authored an article entitled “Congress’s Proposed E-Commerce Legislation for Regulation of Third-Party Sellers: Why It’s Needed and How Congress Should Make It Better” (published by the University of California-Davis Business Law Journal) and co-authored a study entitled “International Judicial Cooperation in Intellectual Property Cases” (published by the European Union Intellectual Property Office). John currently teaches Intellectual Property Criminal Law at the George Washington University School of Law.

Amy Hsiao is a partner at Adsero and is also a US counsel to one of the largest IP law firms in Beijing.  She specializes in IP strategies in China and Asia. 

She is also currently serving as the Vice Chair of China IP Section of American Bar Association and a member of the Standing International IP Task Force of ABA.

Amy started out her career as a corporate finance attorney doing cross-border transactions between the US and China.  She has since worked for some of the world’s largest law firms from brand launching, anti-counterfeiting to civil/criminal enforcements and high-profile trademark and copyright litigations. 

Because of her wide array of IP experiences, she was selected by China’s former Deputy Secretary-General of China’s Trademark Association as the only Western attorney to work on China’s trademark textbook for the Western world. The book was published by Wolters Kluwer and has been described as: “the single indispensable source on China”. 

Angelo Mazza counsels clients in developing brand protection and enforcement strategies, and works extensively with law enforcement on intellectual property-related crimes. He has trained over 60,000 law enforcement officials including U.S. Customs and Border Protection, Immigration and Customs Enforcement, the FBI and local enforcement agencies throughout the country.

Angelo is at the forefront of anti-counterfeiting issues, an issue impacting every brand, and has an awareness of global industry trends. He develops an understanding of his clients’ business goals and creates comprehensive solutions to address current anti-counterfeiting issues and prepare them for future challenges.

He has developed a niche focus on internet matters and manages the firm’s Internet Enforcement Program, working with associates, brand protection specialists and researchers to monitor counterfeit activity including online marketplaces and sites, social media platforms and other emerging technologies.  He also handles UDRP proceedings and traditional domain name disputes.

Angelo interacts regularly with U.S. Customs and Border Protection and actively participates in U.S. Chamber of Commerce efforts to implement policy changes and best practices.

For 30 years, Angelo has provided training sessions for law enforcement at the federal, state and local levels through the International AntiCounterfeiting Coalition (IACCC).  As the current Director of U.S. Training, he is the driving force behind the IACC’s online and app based educational materials to assist law enforcement in fighting intellectual property crimes.

Craig Stone is Senior Counsel, Intellectual Property at Phillips 66 Company. Craig is a graduate of the University of Texas at Austin and Baylor University School of Law. Mr. Stone has been practicing in the area of intellectual property for more than 15 years. His practice focuses on all aspects of brand protection and other IP-related areas, including, licensing, enforcement, social media, software development, data privacy, cybersecurity and patent litigation.

Phillips 66 is a Fortune 25 diversified energy manufacturing and logistics company. With a portfolio of midstream, chemicals, refining and marketing and specialties businesses, the company processes, transports, stores and markets fuels and products globally. Headquartered in Houston, the company has 14,400 employees committed to safety and operating excellence. The company markets its consumer-facing products under the brands Phillips 66, CONOCO, 76, JET, Red Line, Phillips 66 Wings and Kendall.

Stone is currently serving a three-year term on the Council for the Intellectual Property Section of the State Bar of Texas following his role as Chair of the Trademarks Committee. Craig has been recognized as a leading in-house brand counsel by World Trademark Review in its annual WTR 300 publication (’17, ’18, ’19). In 2015, the Phillips 66 legal brand team was named North America Team of the Year by World Trademark Review. Stone’s community service work is focused on youth literacy, career mentoring and conservation at Hermann Park where he currently serves as an advisory board member and co-chairs the Corporate Engagement Committee.

Lesley Fair is a Senior Attorney with the Federal Trade Commission’s Bureau of Consumer Protection, where she has represented the FTC in numerous investigations of false advertising. She was a litigator with the FTC’s Division of Advertising Practices for more than 20 years and now specializes in industry education as the agency’s business blogger, Lesley is among the few attorneys to have received the FTC’s Robert Pitofsky Lifetime Achievement Award. 

She is the author of FTC Regulation of Advertising in Food and Drug Law and Regulation (3d ed. 2015) and The FTC & Social Media in Social Media and FDA: The Essential Guide (2010). From 2000 to 2015, Lesley served as Vice-Chair of the American Bar Association’s Consumer Protection Committee. 

On the faculty of the Catholic University School of Law since 1984, Lesley holds the title of Distinguished Lecturer. She also teaches Consumer Protection Law at The George Washington University Law School. 

Lesley graduated from the University of Notre Dame and received a J.D. from the University of Texas School of Law. She clerked for United States District Judge Fred Shannon and served as staff counsel to the United States Court of Appeals for the Fifth Circuit in New Orleans.

Vincent L. Briccetti was appointed a United States District Judge for the Southern District of New York by President Barack Obama in 2011.

Judge Briccetti is a graduate of Columbia College and Fordham Law School.  At Fordham, he was Articles Editor of the Law Review.  He later served as a law clerk to Judge John M. Cannella of the Southern District of New York and as an Assistant United States Attorney in the Southern District.  As an AUSA, he served as Deputy Chief Appellate Attorney and received the Director’s Award for Superior Performance from the Executive Office of United States Attorneys.

In 1992, Judge Briccetti founded his own law firm in White Plains, the focus of which was criminal defense.  He has lectured at numerous professional conferences on various subjects, including criminal law and procedure, federal civil practice, the federal Sentencing Guidelines, the representation of controversial clients, ethics, and the “art” of cross-examination.  Judge Briccetti is also an Adjunct Professor at Fordham Law School, where he teaches a course on federal sentencing law.  

In 2011, the New York State Bar Association awarded Judge Briccetti its David S. Michaels Award for Courageous Efforts in Promoting Integrity of the Criminal Justice System. 

Erez is Prudential’s chief counsel on cybersecurity and privacy matters.  He leads a team on a wide range of cybersecurity and privacy legal, policy and investigative matters.  Erez serves as primary counsel to the Chief Information Security Officer, Chief Privacy Officer, and IT Risk on information security and privacy matters.  In this role, Erez also oversees the High Tech Investigations Unit. Together with the Information Security Office and IT Risk, Erez works closely to review the enterprise’s cybersecurity program and update executive management on the enterprise’s program.  Erez also serves as a point of contact to regulators and law enforcement on cyber security matters and provides updates to the enterprise on the regulatory and threat landscape.  Since joining Prudential in 2014, Erez has also worked on response planning for a cybersecurity and privacy incidents including technical and business oriented tabletop exercises.  Through his work with the High Tech Investigations Unit, Erez oversees investigations into cyber incident response, cyber crimes, privacy breaches, and intellectual property theft, as well as E-Discovery production and computer forensics.

Erez previously led Prudential’s Corporate Investigations Division (CID), which consists of attorneys and investigators responsible for investigations relating to internal and external fraud, regulatory matters, employee misconduct, and sales practice.

Prior to joining Prudential Financial in February 2014, Erez spent 10 years as a federal prosecutor.  He served as Deputy Chief of the Criminal Division at the U.S. Attorney’s Office, District of New Jersey, and Chief of the Computer Hacking and Intellectual Property Section. Additionally, Erez oversaw the white collar units, including Economic Crimes, National Security, Healthcare and Money Laundering. He was the lead prosecutor on numerous cyber, securities, and fraud matters, including United States v. Drinkman, the largest credit card data breach investigation and prosecution to date, involving the theft of over 160,000,000 credit and debit card numbers.  Albert Gonzalez was sentenced to 20 years imprisonment for his role in the conspiracy.

Erez is the recipient of numuerous awards, including the Attorney General’s Award for Distinguished Service, numerous letters of recognition from the Director of the Federal Bureau of Investigations, and Prosecutor of the Year Award by the Federal Law Enforcement Foundation.

Erez is a frequent lecturer on cybercrime, privacy, and fraud.  He previously taught Cybercrime Law at Rutgers University School of Law.

He graduated from the University of Virginia with a degree in Aerospace Engineering.  He received his law degree from Columbia University Law School.

Katie McCarthy is a partner in the New York office of King & Spalding’s IP practice group with more than 30 years of experience in trademark, design, internet, advertising and copyright matters.  Katie graduated from Columbia University School of Law and secured her bachelor’s in psychology from The College of the Holy Cross.

Katie advises clients on global IP, advertising and platform liability issues and litigates cases in the federal courts and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. 

Katie is actively involved with the New York Intellectual Property Law Association (NYIPLA), having just finished several years on the Board and a term as President. 

Katie also recently finished a two-year term as the Editor-In-Chief of the International Trademark Association’s scholarly journal The Trademark Reporter, having written, solicited and edited articles for the journal for more than 20 years.  Her article on trademark parodies, “Free Ride or Free Speech: Predicting Results and providing Advice for Trademark Disputes involving Parody,” was published in The Trademark Reporter in 2019 and won INTA’s 2020 Ladas Memorial Award in the Professional Category.

Katie speaks frequently for the NYIPLA, INTA and PLI, and serves as the new editor for the PLI one volume treatise, Kane on Trademark Law.  Katie also actively promotes diversity in the profession through her involvement in King & Spalding’s Women in IP and Technology initiatives and her mentorship of young lawyers and law students through various programs including the Leadership Council on Legal Diversity.

Katie lives in Astoria, New York with her husband and two sons.

Keara Gordon's practice includes the defense of class actions across a variety of substantive areas, including consumer, securities, privacy, and insurance litigation in a myriad of industries; financial and corporate litigation and counseling; corporate governance litigation; and internal investigations. She has been involved in appeals to the Second, Third, Fourth, Fifth, Sixth, Seventh, Ninth, and Eleventh Circuits, and the appellate courts of New York, DC, Delaware, and Maryland.

Keara's current or recent engagements include:

  • Won a complete defense verdict after a 61-day trial where the plaintiffs initially sought US$80 million; won counterclaims including defeating the plaintiffs' attempt to stop a redevelopment of the South Street Seaport, and the Court awarded our client US$11.4 million in attorneys' fees, disbursements, and prejudgement interest (Andejo v. South Street Seaport LP et al. New York State Supreme);
  • Won dismissals on motions to dismiss, including: Kamal v. J. Crew, (D. N.J. Sept. 10, 2019), (D. N.J. June 6, 2017), and (D. N.J. Oct. 20, 2016), aff'd, — F.3d –, 2019 WL 1087350 (3d Cir. Mar. 8, 2019); Skillett v. Citizens Parking Shareholders GP, LLC, (N.Y. Sup. 2019); Parker v. J. Crew, (Circuit Court Cook County, Ill. 2018); Jacobson v. Peter Piper Inc., (D. Ariz. 2018); Russell Spitzer v. Icon Parking Systems, LLC and Stankus v. Quik Park Management LLC et al, (N.Y. Sup. 2017) (plaintiffs gave up after we filed our motions to dismiss); Snyder v. Acorn et. al., 684 Fed. Appx. 710 (10th Cir. 2017); Schutz v. Hudson News Distributors LLC, 2015 WL 6087595 (N.Y. Sup. Oct. 16, 2015); U.S. ex rel. Fox v. Dr. Reddy'' Inc., 2014 WL 6750786 (S.D.N.Y. Dec. 1, 2014); In re GLG Securities Litigation, 2014 WL 464762, Fed. Sec. L. Rep. P 97,809 (S.D.N.Y. Feb. 3, 2014); U.S. ex rel. Casady v. Am. Int'l Grp., 2013 WL 1702777 (S.D. Cal. Apr. 19, 2013) (dismissing First Amended Complaint); U.S. ex. rel. Casady v. Am. Int'l Grp., 2014 WL 1286552 (S.D. Cal. Mar. 29, 2014) (dismissing Second Amended Complaint), aff'd, 639 Fed. Appx. 489 (9th Cir. 2016); Footbridge Limited Trust v. Countrywide Financial Corp., 770 F. Supp. 2d 618 (S.D.N.Y. 2011); SRM Global Fund L.P. v. Countrywide Financial Corp, et al., 2010 WL 2473595 (S.D.N.Y. June 17, 2010), aff'd, 448 Fed. Appx. 116 (2nd Cir. 2011); Kinlay v. Henley (N.Y. Sup. 2006); Elliott Associates L.P. et al. v. Hayes, 14 A.D.3d 435, 787 N.Y.S.2d 872 (N.Y. App. Div. 2005); In re AEGON N.V. Securities Litig., 2004 WL 1415973 (S.D.N.Y. June 23, 2004); GLB Forest v. Hight et. al., (S.D.N.Y. 2004) (plaintiffs voluntarily dismissed case after filing of motion to dismiss);
  • Won pre-emptive motion to deny class certification, which the Second Circuit affirmed, Spagnola v. Chubb Corp., 264 F.R.D. 76 (S.D.N.Y. 2010), aff'd, 531 F. Appx. 93 (2d Cir. 2013);
  • Won summary judgement motions, including: Whitaker v. Appriss, 2017 WL 3065174 (N.D. Ind. July 18, 2017) (putative class action alleging violations of federal privacy litigation, the Driver's Privacy Protection Act); Residential Holdings III LLC v. Archstone–Smith Operating Trust, 2011 WL 1364244, *3 (N.Y. App. Div. April 12, 2011) (litigation arising from a $1.2 billion real estate transaction); Virginia Academy of Clinical Psychologists v. Group Hospitalization and Medical Services, Inc. D/B/A Blue Cross/Blue Shield of the National Capital Area, 878 A.2d 1226 (D.C. 2005) (test case by the VACP; affirming summary judgment dismissal of fraud claim);
  • Won appeals, including: Kamal v. J. Crew, 2017 WL 2443062 (D. N.J. June 6, 2017) and 2016 WL 6133827 (D. N.J. Oct. 20, 2016), aff'd, — F.3d –, 2019 WL 1087350 (3d Cir. Mar. 8, 2019); U.S. ex. rel. Casady v. Am. Int'l Grp., 2014 WL 1286552 (S.D. Cal. Mar. 29, 2014) (dismissing Second Amended Complaint), aff'd, 639 Fed. Appx. 489 (9th Cir. 2016); SRM Global Fund L.P. v. Countrywide Financial Corp, et al., 2010 WL 2473595 (S.D.N.Y. June 17, 2010), aff'd, 448 Fed. Appx. 116 (2nd Cir. 2011); Spagnola v. Chubb Corp., 264 F.R.D. 76 (S.D.N.Y. 2010), aff'd, 531 F. Appx. 93 (2d Cir. 2013); Residential Holdings III LLC v. Archstone–Smith Operating Trust, 2011 WL 1364244, *3 (N.Y. App. Div. April 12, 2011); Andejo v. South Street Seaport LP et al., 2007 NY Slip Op 04231 [40 AD3d 407] (N.Y. App. Div. 2007);
  • Secured favorable settlements, including: Dover v. British Airways, (E.D.N.Y. 2018); Cody v. SoulCycle, Inc. (C.D. Cal. 2017); Cavka v. SoulCycle (C. D. Cal. 2018); Plycos, LLC, et al. v. Tang et al. (L.A. Superior Court) and Chen v. Spokeo, Inc. (AAA Arbitration) (2016); In re Nu Horizons Shareholders Litig., (N.Y. Sup. 2011); Held v. AAA Southern New England (D. Ct. 2013); CoKinetics v. DB Capital (N.Y. Sup. 2006); Fresco v. Automotive Directions Inc., et. al., (S.D. Fla. 2009);
  • Represented companies, audit committees and officers and directors in connection with internal investigations in a variety of substantive areas including accounting irregularities, potential OFAC violations, potential theft by company officers, "tone at the top" issues, and in connection with disclosures to the Securities and Exchange Commission, the Department of Treasury, and the Department of Defense; and
  • Pro bono, as amicus counsel for Child Justice, Inc., advocated that children who are exposed to domestic violence be included in protection orders, even in instances when the child is not physically present for the violent event. The Washington State Supreme Court modified the protection order. Rodriguez v. Zavala.

Keara is a member of the firm-wide Executive Committee, the Chair of the Partner Nominating Committee, co-chair of the Class Action Litigation Practice Group, and on the Steering Committee for DLA Piper's National Leadership Alliance for Women (LAW). Keara served on the board of directors of MAC Angels, a non-profit corporation that helps families coping with ALS, and coaches her daughter's mock trial team at the Ursuline School, which in their first year of competition won first place in the 2017 Thurgood Marshall Junior Mock Trial Program.