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Understanding the Intellectual Property License 2020


Speaker(s): Anne S. Jordan, Bruce R. Ewing, David Rabinowitz, Helene M. Freeman, Jeffrey D. Osterman, Lisa Keith, Nicholas Vogt, Ryan T. Colgan, Sarah Robertson, Stuart M. Riback, Thomas D. Pease, Willard K. Tom, Yolanda M. King
Recorded on: Nov. 5, 2020
PLI Program #: 278479

Anne Jordan is Of Counsel to the Chicago law firm of Mandell Menkes LLC.  Her practice includes counseling corporations on commercial, IP and technology transactions and e-discovery issues.  She also arbitrates and mediates disputes, serving on the International Institute for Conflict Prevention & Resolution’s (CPR) Panel of Distinguished Neutrals and the AAA Commercial and Employment Panels.  

Ms. Jordan has been advising corporations both as a senior executive with responsibility for legal affairs and as outside counsel for more than 30 years.  She worked for consumer products and technology companies at the General Counsel or Assistant General Counsel level for over 15 years, including serving as Senior Vice President, General Counsel and Secretary for PeopleSoft, Inc., the world’s second largest provider of enterprise application software with annual revenues of approximately $ 2.8 billion, until it was acquired by Oracle Corporation.  She oversaw the corporation’s legal department, and for part of her tenure, had responsibility for Human Resources, Real Estate/Facilities and Corporate Security.  Prior to that, Ms. Jordan was Vice President and General Counsel for Sega of America, Inc., a Partner in the Palo Alto firm, Carr & Ferrell, concentrating on litigation, licensing and intellectual property matters, Vice President and General Counsel for Worlds of Wonder, Inc., a manufacturer of electronic toys and games, Assistant General Counsel for Dole Foods, Inc., a $2 billion food processing and real estate development corporation, and Corporate Counsel with Beatrice Companies, Inc.

Ms. Jordan is a frequent lecturer on technology and licensing topics, and has been published in the National Law Journal. She is a contributor to the publication “Winning Legal Strategies for Software Companies: Leading Lawyers on Protecting IP, Negotiating Contracts, and Creating Legal Game Plans.”    She currently serves as a co-chair of the ABA Dispute Resolution Section’s Early Dispute Resolution Committee.  She has served on the International Trademark Association’s (INTA) Board of Directors and the American Law Institute’s Advisory Committee for the Restatement of Unfair Competition. 

Ms. Jordan received a J.D. from DePaul University College of Law and a B.A. from Northwestern University.


Helene M. Freeman is a partner in the Litigation Department at Phillips Nizer LLP in New York.  Helene’s practice is focused on all facets of entertainment, publishing, fashion and the arts.  In the course of the past thirty-five years, she has represented multinational record distributors, leading musical performers, film and television producers and distributors, international music publishing companies, theatrical producers, authors and advertising agencies in copyright and contract matters. 

As a litigator, Helene has been trial and appellate counsel in a series of precedent setting cases under both copyright and trademark law in jurisdictions throughout the United States.  She counts among the high profile clients she has represented in copyright infringement litigation Mick Jagger, *NSYNC and most recently, the surviving members of Led Zeppelin in their successful defense against the charge that “Stairway to Heaven” infringed the copyright of the musical composition “Taurus”. 

She provides assistance in developing plans for worldwide exploitation and protection of creative property and regularly advises on the acquisition and sale of rights in entertainment properties. 

Helene is a frequent speaker on copyright and entertainment law, including CLE programs sponsored by the American Bar Association Forum Committee on the Entertainment and Sports Industries, the Practicing Law Institute (PLI), the Defense Research Institute and the Copyright Society of the United States, among others.  She has been recognized by Best Lawyers® in the field of Copyright and Super Lawyers in the field of Entertainment.

Helene is a cum laude graduate of the New York University School of Law, where she was an editor of the Law Review and elected to the Order of the Coif.  She earned her Bachelor’s degree from Smith College, where she was elected to membership in the Phi Beta Kappa Society. 


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)


Lisa Keith is the General Counsel and Corporate Secretary of Steven Madden, Ltd., where she oversees all legal matters for Steve Madden and its portfolio of brands, including Betsey Johnson, Blondo, Dolce Vita, Greats, and BB Dakota.  Prior to joining Steve Madden, Lisa was a senior associate at Davis Wright Tremaine LLP, where she specialized in intellectual property law and represented clients in the fashion, technology, food and beverage and luxury goods industries.   

Lisa began her legal career at Gibson, Dunn & Crutcher LLP, where she practiced in the litigation department.  Lisa has written and spoken on a variety of legal topics. 

Lisa earned her J.D. in 2009 from New York University School of Law and her B.A., summa cum laude, in 2006 from Brandeis University, where she was Phi Beta Kappa. 


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 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.


Tom Pease is a partner in Quinn Emanuel’s New York office who concentrates his law practice on intellectual property disputes, including patent and antitrust litigation relating to standard essential patents or SEPs subject to FRAND obligations.  Tom has taken a leading role litigating multiple cases involving patents that were subject to the IPR policies of ETSI, 3GPP, IEEE, H.264, JEDEC and other standard setting bodies.  He has also served as lead counsel in patent and trade secret cases involving a wide range of technologies outside the context of standards, as well as in cases involving design patents and trade secrets.

Tom has been recognized as a top patent litigator in the IAM Patent 1000guide for the past five years, with the publication recently noting that Tom is a “five-star attorney” and “master strategist,” who is "brilliant at the intersection of patent and antitrust law" and "the man to call in a standard setting context."  For the past three years, Tom has also been recognized for “his licensing expertise in connection with standard-essential patents” in recognition of the numerous FRAND licenses that he has negotiated.

Tom has also been “highly recommended” for his patent litigation work in The Legal 500 and was listed again as a top-rated Intellectual Property Litigation Attorney in New York in the current edition of Superlawyers.

Tom also has extensive licensing and counseling experience.  He has designed and implemented patent procurement and licensing programs for numerous clients ranging from start-ups to Fortune 50 companies.  In that regard, Tom has traveled around the world to help clients assert their patents both within and outside the context of litigation and arbitration, and has negotiated numerous license agreements including several FRAND licenses based on portfolios that include SEPs.  Tom has also represented clients in connection with DOJ, FTC and DG Comp. investigations. 

Tom has litigated and tried several high profile cases in the Northern District of California, the District of Delaware, the Eastern District of Texas, the Eastern District of Virginia, the Southern District of New York, and several other venues.  He also has extensive experience coordinating multi-front litigations pending in various jurisdictions around the world, including the ITC where he regularly appears.  Tom prides himself on helping the firm's clients to achieve their objectives as cost-efficiently as possible, whether through pre-suit negotiations, early dispute resolution after the filing of a strong Complaint or Answer, or after a full trial or 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 and advisor
  • 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.


Yolanda M. King is the Interim Assistant Dean for Student Affairs and an Associate Professor of Law at Northern Illinois University College of Law in DeKalb, Illinois.  She teaches Property and various intellectual property law-related courses, such as Copyright Law, Entertainment Law, Intellectual Property Law, and Trademark Law.  Her scholarly interests include the copyrightability of tattoos, the enforcement of tattoo copyrights, right of publicity protection for celebrities’ tattoos, music licensing, and the intersection of religion and copyright law.

Dean King is Of Counsel at Chicago-based intellectual property law firm Advitam IP, where she advises clients on trademark protection and prosecutes federal trademark applications before the U.S. Patent and Trademark Office.  She graduated from Harvard Law School and Indiana University-Purdue University Indianapolis.


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)


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.


SARAH DELIVERS PRACTICAL ADVICE TO HELP BUSINESSES BUILD THEIR INTELLECTUAL PROPERTY ASSETS AND ACHIEVE THEIR BUSINESS GOALS.

Sarah has over twenty years’ experience helping clients protect, enforce and exploit their intellectual property assets and overseeing clients’ general business needs, with particular depth in the creative industries, tech, financial and consumer product sectors.

Sarah has extensive experience in a wide scope of corporate and commercial agreements and transactions involving intellectual property, and assisting with the day-to-day needs of clients. She clears, registers and enforces brand names in the U.S. and internationally. She handles sales and distribution issues, as well as complex licensing matters. She represents clients in Trademark Trial and Appeal Board proceedings and in disputes involving intellectual property, including mobile app and domain name conflicts. She also counsels clients on marketing, advertising, contest and online reputation management issues. Sarah also services clients operating in the creative and entertainment industries, including in areas involving rights exploitation, including U.S.-China film, TV and music related transactions, as well as in the newly-developing cannabis branding area.

Also admitted to practice in Ontario, Canada, and currently qualified as a Foreign Legal Consultant in Ontario, Sarah has extensive experience in Canadian cross-border issues and helping Canadian businesses enter the U.S. market.

Sarah is the head of Dorsey’s New York Trademark Group and the firm’s Creative Industries Industry Group. Sarah is a contributor to Dorsey’s critically-acclaimed IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. TheTMCA.com was named one of the “Top 50” law blogs by the ABA Journal in 2017.


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