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IP Enforcement and Litigation 2013: Criminal and Civil Update


Speaker(s): Andrea L. Colby, Andrea Sharrin, Andy Abrams, Angelo E.P. Mazza, Brian W. Brokate, Bruce W. Baber, Dale Cendali, Dax Terrill, Ewa M. Abrams, Jeremy R. Feinberg, Juliana M. Cofrancesco, Kathleen E. McCarthy, Mark A. Witzal, Merillat Frost, Nicole Hyland, Peter C. Welch, Siegrun D. Kane
Recorded on: Feb. 1, 2013
PLI Program #: 42002

Merillat Frost is Trademark Counsel for The Coca-Cola Company, based at the company's headquarters in Atlanta, Georgia. Ms. Frost handles all aspects of trademark law including international counseling, prosecution, and transactional work, with an emphasis on Internet and social media issues. Ms. Frost received her B.A. in English from Duke University, with honors, and a J.D. from The University of Texas School of Law. Before joining The Coca-Cola Company, she was an associate in the Intellectual Property group in King & Spalding's Houston and New York offices. She is a member of the International Trademark Association and is active on INTA's Internet Committee.


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 on behalf of a wide variety of clients 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.


Professional Activities:

Ewa Abrams is Vice President - Associate General Counsel & Chief Privacy Officer of Tiffany & Co. Her work at Tiffany spans a wide variety of practice areas including corporate transactional; intellectual property and unfair competition; data privacy and security; internet and technology, advertising and media law; and regulatory and compliance matters. She is lead counsel responsible for the company’s commercial trade and technology agreements and further has responsibility over all aspects of the management of Tiffany’s worldwide intellectual property matters, including licensing, internet-related issues, advertising and social media. In her role as Chief Privacy Officer, she is manages worldwide privacy compliance for the company, including implementing compliance programs and identifying, evaluating and managing risks associated with enterprise data privacy and information management.

Ms. Abrams is an Adjunct Professor at Fordham University Law School, where she teaches a Business Law course / internship practicum.

Board Affiliations / Committees: 

Ms. Abrams served on the Board of Directors of the International Anti-Counterfeiting Coalition (c.2010- 2016) and its Executive Committee (c.2014-2016); the Advisory Board of the Center for Anti- Counterfeiting and Product Protection at Michigan State University (c. 2012-present); the New York City Bar Committee on Trademark Infringement & Unfair Competition (2016); the National Retail Federation Committee on Data Privacy & Cybersecurity (c. 2012-present) and the National Retail Federation / EuroCommerce Joint Task Force on the EU General Data Protection Regulation (2016- present).

Education:

Ms. Abrams received her Juris Doctor from Brooklyn Law School in New York (2003) and her Bachelor’s of Arts from Bucknell University in Pennsylvania (cum laude (2000)).

Speaking Engagements:

Ms. Abrams has previously presented on numerous intellectual property rights and data privacy issues for the International Trademark Association, Practicing Law Institute, the New York County Lawyers’ Association, New York City Bar, Federal Bar Association, Association of Corporate Counsel, Benjamin N. Cardozo School of Law, Fordham Law School, as well as other anti-counterfeiting, brand protection and data privacy forums (c.2004-present).


Andrea Sharrin is Deputy Chief of the Criminal Division's Computer Crime and Intellectual Property Section (CCIPS) in the Department of Justice where she supervises 14 federal prosecutors and has responsibility for the Department's intellectual property criminal enforcement program nationwide. Prior to serving as Deputy Chief for CCIPS, Andrea was an Assistant U.S. Attorney in the District of Columbia where she prosecuted a wide variety of criminal cases involving narcotics, weapons, violent crime and other felony offenses. Ms. Sharrin also has extensive civil litigation experience having served as Senior Counsel to Federal Programs Branch in the Department's Civil Division where she litigated cases raising constitutional, statutory and administrative challenges to federal laws, regulations and policies, as well as employment discrimination cases, and as a Director for Civil Litigation in the Recording Industry Association of America. Ms. Sharrin is an Adjunct Professor of Law at the Georgetown University Law Center. She began her legal career as a law clerk to the Honorable Lowell A. Reed, Jr., U.S. District Court for the Eastern District of Pennsylvania.


Jeremy R. Feinberg is the Statewide Special Counsel for Ethics and the Commercial Division at New York's Office of Court Administration (OCA). Among his duties at OCA, he provides ethics training, support and advice to the judges and non-judicial employees of the Unified Court System.

Mr. Feinberg is a regular speaker and panel moderator on legal ethics at Continuing Legal Education (CLE) programs around New York and has taught legal and judicial ethics as far away as Florida and Alaska. He is an adjunct professor of ethics and professional responsibility at Columbia Law School and has served as a guest lecturer at a number of New York area law schools.

He is the Chair of the New York City Bar Association's Committee on Professional Ethics, a committee which issues formal ethics advisory opinions to lawyers on behalf of that bar association.  He has also served on the City Bar's Council on Judicial Administration, Committee on Professional Responsibility and Committee on Professional Discipline.

In his role as OCA's Statewide Special Counsel for the Commercial Division, Mr. Feinberg provides support and assistance to all of the Commercial Division courts throughout New York, and serves as a liaison between the Bench and the commercial Bar. He serves as a liaison to the Executive Committee of the New York State Bar's Commercial and Federal Litigation Section.

Before joining OCA in January 2006, Mr. Feinberg was a senior litigation associate at Proskauer Rose LLP, where he handled sports law, commercial litigation, and ethics matters for the firm and its clients. He served as law clerk to Hon. Judith S. Kaye, Chief Judge of the New York Court of Appeals for two years in 1996-1998. He is a 1995 graduate of Columbia Law School and a 1992 graduate of Columbia College.


Juliana Cofrancesco is an attorney-advisor at the U.S. International Trade Commission.  She serves as counsel to ITC Commissioner Meredith M. Broadbent. She served as counsel to Commissioner Deanna Tanner Okun during her term as Chairman of the USITC. Prior to joining the USITC, Ms. Cofrancesco was in private practice litigating international trade and intellectual property matters including Section 337 proceedings, antidumping and countervailing duty proceedings, Section 201 Safeguard actions, export controls, U.S. Customs and Border Protection matters (such as HTS classification, valuation, admissibility, dutiability, and other Customs matters), and trade preference programs. She represented clients before the U.S. International Trade Commission, the U.S. Department of Commerce, the U.S. Trade Representative's Office, U.S. Customs and Border Protection, NAFTA Binational Panels, the U.S. Court of International Trade, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. Ms. Cofrancesco served as Chair of the ABA Section of Intellectual Property Law's International Trade Commission Committee.  She is a Past President of the ITC Trial Lawyers Association.
 


Peter Welch

Primary Areas of Practice: Intellectual Property

Law School/Graduate School: Fordham University School of Law

Work History

  • Associate, Morgan & Finnegan LLP (2002-2005)
  • Associate, Davis & Gilbert LLP (2005-2007)
  • Vice President, Take-Two Interactive Software, Inc. (2007-present)


Professional Memberships:

Peter Welch is Associate General Counsel of Take- Two Interactive Software, a leading worldwide publisher, developer and distributor of interactive entertainment software. The Company develops and publishes products through its wholly owned labels Rockstar Games, Irrational Games, 2K Games, 2K Sports and 2K Play. The Company's most famous franchises include Grand Theft Auto, Sid Meier's Civilization, the MLB 2K, NBA 2K, and NHL 2K series of sports games and BioShock.  The Company is headquartered in New York City, has development studios in seven countries, and sells its products worldwide.

Take-Two's Intellectual Property team coordinates the worldwide protection of the Company's trademarks, copyrights, and patents and supervises the process of clearing original and licensed material for use in the Company's games.  In addition to these traditional intellectual property matters, the team is also responsible for issues related to game ratings, game related legislation, advertising, sweepstakes and games of skill, data privacy and data security. Mr. Welch's practice focuses primarily on advising Take-Two's 2K Games, 2K Sports, 2K Play and Irrational Games labels. 

Mr. Welch joined Take Two in 2007 from Davis & Gilbert LLP, where he counseled clients (including Take-Two) regarding all aspects of intellectual property. At D&G, Pete represented multinational, national and local advertising agencies, companies, and individuals in connection with trademark, copyright, advertising, and corporate intellectual property matters.  Prior thereto, he was an associate at Morgan & Finnegan LLP, where he focused on litigation in the areas of trademark, copyright, and patent infringement. Pete also oversaw anti-counterfeiting and gray market/transshipment enforcement for a luxury watch manufacturer. He is a graduate of Boston College and Fordham University School of Law and an avid gamer. 


Angelo Mazza is a Partner  in the Intellectual Property area at the firm of Gibney Anthony & Flaherty LLP in New York.

At the firm, he counsels clients on Customs enforcement issues such as recordation, abandonment and trade facilitation. He also works extensively on matters covering online channels used by counterfeiters and methods to diminish sales and target those sellers. He advises clients in developing and implementing enforcement programs.

Mr. Mazza has organized and conducted training sessions for CBP, ICE, FBI and state and local law enforcement.  Over the course of over 25 years involved in training programs, he has trained over 60,000 enforcement personnel. He works closely with law enforcement at all levels to organize and carry out training related to counterfeit products and applicable laws. He serves as the IACC’s Director of US Trainin and he created the IACC’s well regarded training programs and materials for law enforcement which are updated annually and on their 17th edition.  

Mr.  Mazza is a graduate of Fordham University and Fordham University School Law. 


Brian Brokate is the head of Gibney, Anthony & Flaherty’s Intellectual Property Practice Group. He has extensive experience assisting brandowners in enforcement procedures to combat trademark and copyright infringement. Mr. Brokate focuses on anti-counterfeiting and anti-piracy and handles all stages of civil anti-counterfeiting and infringement litigation.

Mr. Brokate is an Advisory Board Member of the International Anti-Counterfeiting Coalition, Inc. (IACC). He is the Treasurer of the New York Task Force, a coalition of brand owners affected by counterfeiting. He also serves on the Tariff & Embargo Committee of the International Trademark Association (INTA). 

Recognized as an industry leader, Mr. Brokate is frequently quoted on trends in intellectual property law. He has also authored and co-authored numerous articles and publications and speaks before industry and trade associations on intellectual property law issues including infringement, anticounterfeiting, enforcement strategies and trade dress.


Dale Cendali is a nationally recognized leader in the field of intellectual property litigation, having successfully litigated and tried numerous high-profile cases, and having argued before the U.S. Supreme Court. Her practice encompasses copyright, trademark, false advertising, patent, Internet, and trade secrets law, as well as defamation, the right of publicity, privacy, complex contract disputes and similar areas, including electronic discovery. Dale heads Kirkland’s Copyright, Trademark, Internet and Advertising practice group.

In 2017, Dale was named “Outstanding Litigator: New York” at Managing IP’s North America Awards. In 2016, Law360 named Dale one of the 25 “Icons of IP,” who have “made an indelible mark in the IP area.” In 2013, The National Law Journal selected Dale as one of the “100 Most Influential Lawyers in America.” The National Law Journal had previously named her one of “America’s Top 50 Women Litigators,” one of the “50 Most Influential Women Lawyers in America,” and one of “The Most Influential Lawyers” for media and entertainment. Dale has repeatedly been ranked as a “top tier” lawyer by Chambers Global and Chambers USA, which describes her as “one of the best lawyers in the country” in her field who combines “intellectual acuity” with a “tough, hard-working attitude”; a “superb litigator” who “thinks quickly on her feet and vigorously defends her clients.” The World Trademark Review recognized Dale as a “Trademark Experts’ Expert,” “at the top of anybody’s list of the best trademark lawyers in the country”. Euromoney Legal Media Group also named Dale as “Best in Copyright [in] the Americas” at its inaugural Americas Women in Business Law Awards in 2012 and in 2013, and in 2014 was awarded “Best in Trademark [in] the Americas.” Dale also was included in Euromoney’s Benchmark guide, “The Top 250 Women in Litigation.” Dale was also selected as one of the “20 Most Influential Women in IP Law” by Law360.  Managing Intellectual Property selected Dale as one of the six “Outstanding IP Practitioners” in the United States, and named her trial victory for J.K. Rowling on the high-profile “Lexicon” fair use case as the “Copyright Trial of the Year.” IP Stars has named Dale one of the “Top 10 Women in IP.” Dale was listed as one of Lawdragon’s 500 Leading Lawyers in America in the 2013-2014 and 2014-2015 guides. The Legal 500 U.S. recognized Dale as a “leading lawyer” in the areas of copyright and trademark litigation. IP Law & Business recognized her as one of the “Magnificent Seven - IP’s Best Young Trial Lawyers.” Dale was selected for the 2017 edition of The Best Lawyers in America in the areas of Copyright Law and Litigation – Intellectual Property. In 2016, she was selected as Litigation – Intellectual Property “Lawyer of the Year.” She also has repeatedly been named by Super Lawyers among “The Top 100 New York Lawyers” and “The Top 50 Female New York Lawyers,” and was profiled in the feature story “Truth, Justice and the Cendali Way” in the 2007 New York Metro edition of Super Lawyers Magazine. World Trademark Review named Dale a “revered branding expert” who “remains keenly engaged in the development of the law.” Dale has been recognized by the Harvard Law Bulletin as one of Harvard Law School’s “Nifty 50,” celebrating 50 of Harvard Law School’s alumnae. Dale was also selected as a litigation star in the 2013 edition of Benchmark Appellate. Kirkland was named by Managing Intellectual Property in 2014 as “Trademark Contentious Firm of the Year-Nationwide.”

Dale is also an adjunct professor at Harvard Law School, teaching copyright and trademark litigation. She is also a prolific writer and has long been active in the bar. In 2010, INTA elected Dale to serve as Counsel, the highest-ranking position in the organization for an outside counsel. She also previously chaired INTA’s Dilution and Enforcement Committees, and is the current chair of INTA’s inaugural Copyright Committee.

Dale was also the Vice Chair of the Copyright Division and chair of the IP Special Issues Division for the IP Section of the ABA, and currently serves on Council for the ABA IP Section. Among many other positions in the bar, Dale is also the former Chair of the Trademarks and Unfair Competition Committee of the Association of the Bar of the City of New York. In 2015 Dale was selected as an Adviser for The American Law Institute’s project, Restatement of the Law, Copyright.

Education

Harvard Law School, J.D., 1984

  • Editor-in-Chief, The Harvard Journal on Legislation, 1983–1984

Yale University, B.A., 1981

  • summa cum laude
  • Phi Beta Kappa

Admissions & Qualifications

1985, New York


Name: Andy Abrams

Position/Title: Senior Trademark Counsel
Firm or Place of Business: Google Inc.

Address:
1600 Amphitheatre Parkway
Mountain View, CA 94043
Phone: 650-669-8752
E-Mail: abrams@google.com

Primary Areas of Practice: Andy Abrams is a Senior Trademark Counsel in the Mountain View office of Google. His responsibilities include managing the company's trademark portfolio, developing policies, negotiating licenses, handling disputes, and advising clients on various branding and marketing issues. He is also actively involved in developing Google’s domain name policy and strategy with respect to ICANN's new gTLD program. 

Law School/Graduate School: University of Virginia School of Law

Work History:
Principal, Trademark and Copyright Group
Fish & Richardson P.C. (San Diego)
January 2011 – May 2011

 Associate, Trademark and Copyright Group
Fish & Richardson P.C. (San Diego)
April 2006 – December 2010

Associate, Intellectual Property and Business Practice Groups 
Luce, Forward, Hamilton & Scripps LLP
September 2003 – April 2006 

Professional Memberships:
INTA Internet Committee
INTA Domain Disputes Ownership & Whois Subcommittee
ICANN GNSO Business Constituency


Siegrun D. Kane is a partner in Kane Advisors, LLP. She received her J.D. from Harvard Law School and specializes in litigating trademarks in the federal courts and the USPTO.

Siegrun is the author of Kane on Trademark Law published by PLI now in its 6th Edition’ and updated bi-annually.

Siegrun also acts as a consulting and testifying expert. She has been repeatedly listed in The Best Lawyers in America, New York Super Lawyers and other “Who’s Who” publications.  The Wall Street Journal has reported her views on trademark issues.

Siegrun lectures frequently for PLI, and other CLE organizations. 


Deputy Director Mark A. Witzal assumed responsibility as Deputy Director for the National Intellectual Property Coordination Center, located in Crystal City, Virginia on August 1, 2011. The National Intellectual Property Rights Coordination Center (IPR Center) stands at the forefront of the United States Government's response to global intellectual property theft. The IPR Center's mission is to insure national security by protecting the public's health and safety, the U.S. economy, and the war fighters, and to stop predatory and unfair trade practices that threaten the global economy. To accomplish this, the IPR Center brings together 17 key U.S. investigative agencies and four international partners involved in the criminal enforcement of IP laws in a task force setting. This structure enables the IPR Center to efficiently and effectively leverage the resources, skills, and authorities of each participating agency and provide a comprehensive response to IP theft.

Prior to being selected by Director Morton to serve as the Deputy Director for the IPR Center, Mark served in several offices and positions. Most recently, Mark served as Deputy Special Agent in Charge for the HSI New Jersey field office. During this assignment, he was the senior operations manager in command of ICE/HSI investigations that occur within New Jersey. 

Prior to becoming the Deputy, Mark served as an Assistant Special Agent in Charge for the Public Safety Division, where he managed investigative groups that target transnational criminal organizations that are involved in the cross border smuggling of narcotics and contraband merchandise.

Mark has over 22 years of federal law enforcement experience. During his tenure as a federal law enforcement officer, Mark worked as a field investigative agent and supervisor in the area of commercial fraud, trade based money laundering and narcotics. He managed three different investigative groups for the ICE/HSI field office in New York. His specialty lies in investigating transnational criminal organizations that smuggle illegal merchandise across international borders. In addition to his experience as field agent and supervisor, Mark was assigned to legacy U.S. Customs Headquarters in Washington, DC in the Fraud Investigations Division, where he managed the Forced Labor program, and also served as an operations manager coordinating headquarters interaction with the field offices in San Diego and Seattle.


Nicole Hyland is a Partner at Frankfurt Kurnit Kurnit Klein & Selz.  She counsels lawyers on ethics issues, such as advertising and social media use, conflicts of interest, legal fee disputes, escrow issues, multijurisdictional law practice, and more. She also represents lawyers in disciplinary proceedings, disqualification motions and malpractice cases. 

 Ms. Hyland serves on the New York State Bar Association’s Committee on Standards for Attorney Conduct (COSAC), which is responsible for drafting and proposing amendments to the New York Rules of Professional Conduct.  Since 2008, she has been a member of the Association of Professional Responsibility lawyers (APRL), a national organization of ethics and professional responsibility lawyers and she is co-chair of the Professional Ethics Committee of the New York Women’s Bar Association.  Ms. Hyland is the immediate past Chair of the Committee on Professional Ethics of the New York City Bar Association, which provides guidance to New York state lawyers on a wide range of ethical issues, issues formal and informal written opinions, and operates the Ethics Hotline, a free resource for all New York state attorneys. 

 Ms. Hyland frequently writes and lectures on legal ethics and professional responsibility issues.  She is the co-author, along with Professor Roy Simon, of the 2015, 2016 and 2017 editions of Simon’s New York Rules of Professional Conduct Annotated.


Katie McCarthy is a partner in the New York office of King & Spalding’s IP practice group with 31 years of experience in trademark, design, internet, advertising and copyright matters. 

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

Katie is active on the Board of Directors of the New York Intellectual Property Law Association (NYIPLA) and is currently President-Elect of that organization, slated to take over as President in May. 

Katie 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. 

Katie speaks frequently for the NYIPLA, INTA and PLI, and serves as one of the editors for the PLI book, Kane on Trademark Law.  Katie also actively promotes diversity in the profession through her involvement in King & Spalding’s Women in IP initiatives.

Katie lives in Astoria, New York where she, her husband and two sons can be found frequently hosting assorted siblings, nieces, nephews, cousins and friends.


Andrea Colby is a certified professional coach and an intellectual property attorney with over 30 years of experience in the legal profession in New York and New Jersey. Throughout her career, Andrea has worked for notable firms including: Johnson & Johnson, Morgan and Finnegan and Union Carbide and has provided a full range of substantive intellectual property legal support for clients including patent preparation and prosecution, patent litigation strategy, trademark and copyright litigation, patent interferences and client counseling. 

In addition to her work as an attorney, Andrea provides deep expertise to her coaching clients helping them work through key areas of transition both personally and professionally and develop a strategic plan to maximize their development and achieve their goals. Andrea is particularly versed in the legal profession and understands firsthand what it takes to be successful in the legal field. 

Andrea lectures extensively on topics related to professional practice (specializing in communication), patent and intellectual property law for the New Jersey Institute of Continuing Legal Education, the annual “Joint Patent Practice Seminar” sponsored by New York, New Jersey, Connecticut and Pennsylvania IP Law Associations and at the Practicing Law Institute in New York. Andrea also serves on the Board of Trustees of Albany Law School of Union University, chairing the Board’s Career Services Committee.

Andrea is also very active in her community and plays a key leadership role in support of non-profit organizations including Young Audiences of New Jersey and Congregation Neve Shalom. She has also served on the Boards of the New Brunswick Chamber Orchestra and TADA! Children’s Theatre in Manhattan.

Andrea obtained her B.S. in Environmental Engineering from Rensselaer Polytechnic Institute, her J.D. from Albany Law School of Union University and her M.A. in Organizational Management from the Fielding Graduate Institute. Andrea is also a graduate of the Institute for Professional Excellence in Coaching program where she obtained her coaching credentials. She is an International Coaching Federation accredited Associate Certified Coach and a Myers-Briggs Type Indicator certified practitioner.