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Intellectual Property Rights Enforcement 2014


Speaker(s): Angelo E.P. Mazza, Brian W. Brokate, Bruce W. Baber, John H. Zacharia, Jonathan Z. King, Joseph P. Lavelle, Kathleen E. McCarthy, Katie M. Lachter, Kristina Rosette, Nicole Hyland, Nur-ul-Haq, Shane P. Berry, Steven M. Gruskin
Recorded on: Jan. 31, 2014
PLI Program #: 50874

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.


Primary Areas of Practice: Corporate Security; Brand Protection

Undergraduate: Bachelor of Science, Eckerd College, St. Petersburg, Florida

Work History: Supervisory Special Agent, FBI Special Agent, Florida Department of Law Enforcement

Professional Memberships: Mr. Berry is an Executive Board Member for the International AntiCounterfeiting Coalition (IACC).  He is also a member of the International Security Management Association (ISMA), the American Society for Industrial Security (ASIS) and the US Department of State‚Äôs Overseas Advisory Council (OSAC).


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.


Brian Brokate is the head of Gibney, Anthony & Flaherty’s Intellectual Property Practice Group. He assists brand owners in securing and protecting their intellectual property in the United States and abroad. Working closely with his clients over many years, he has developed their comprehensive intellectual property protection strategies to support their growth from emerging businesses to leading global brands.

Mr. Brokate has extensive experience in enforcement procedures to combat trademark and copyright infringement. He manages all stages of civil anti-counterfeiting and infringement litigation as well as providing support to state and federal criminal actions.

Mr. Brokate serves on the board of several industry organizations including being involved in various with the International Trademark Association (INTA) and the Intercontinental Grouping of Accountants and Lawyers (IGAL).

As a recognized industry leader, Mr. Brokate is frequently quoted on trends in intellectual property law. He is a speaker and author for PLI and other educational forums, focusing on intellectual property rights and enforcement. 


Joseph Lavelle is an experienced patent lawyer, focusing primarily on the preparation and trial of patent infringement cases.

Joseph also has handled a number of successful appeals to the Court of Appeals for the Federal Circuit.

Patent Litigation

Joseph has more than 25 years of experience litigating patent cases, including many bench and jury trials. He has litigated in most areas of technology, including semiconductors, computers, computer software, telephony, Digital Signal Processing, telematics, waveform encoding, automotive technology, financial services, biotechnology and many others.

In addition to federal district court proceedings, Joseph has tried a number of Section 337 proceedings before the US International Trade Commission (ITC), as well as handled cases before the US Court of Federal Claims and appeals to the Court of Appeals for the Federal Circuit. He also is licensed to practice before the USPTO and has successfully handled interference proceedings.

Antitrust

Joseph has vast experience handling litigation and counseling matters at the intersection of competition laws and antitrust laws. He has participated in many of the leading matters in the area of standard setting. Also, he has represented clients in patent-antitrust matters before the FTC and the Antitrust Division of the Department of Justice.


Katie Lachter is the Firm’s associate general counsel. Based in the New York office, Katie counsels the Firm’s lawyers on matters of professional responsibility and cross-jurisdictional and compliance issues in support of the Firm’s commitment to excellent client service.

Katie is also a member of the Law Firm Practice Group and advises lawyers, law firms and in-house legal departments on risk management and the laws and regulations governing lawyers.

Katie is a frequent writer and speaker on issues relating to legal ethics. She is a lecturer-in-law at Columbia Law School, where she teaches professional responsibility. She is also on the faculty of the Practising Law Institute and Lawline.com. She co-authored Risk Management Survival Tools for Law Firms, third edition, published by the ABA Law Practice Division in 2016. She is also the co-author of a chapter entitled "The Practical Case for Civility," in Essential Qualities of the Professional Lawyer, published by the ABA Standing Committee on Professionalism in 2013, and has co-authored numerous articles on ethics and professional responsibility for the New York Law Journal and Bloomberg Law Reports. Katie is a past secretary of the New York City Bar Association Committee on Professional Ethics and a current member of the Association of Professional Responsibility Lawyers, the New York Women’s Bar Association Ethics Committee, and the New York State Committee on Standards of Attorney Conduct.

Katie was named a 2012 Distinguished Legal Writing Award winner by the Burton Awards for Legal Achievement. She was also the recipient of the Legal Aid Society’s 2009 Pro Bono Publico award. Katie was designated a "Rising Star" in Super Lawyers’ New York Metro edition in 2014, and named a "Super Lawyer" in the 2015 edition.


Nicole Hyland is a Partner at Frankfurt Kurnit Kurnit Klein & Selz, as well as Deputy General Counsel for the firm.  She counsels lawyers and law firms on risk management and ethics issues, such as retainer agreements, conflicts of interest, legal fee disputes, escrow issues, multijurisdictional law practice, lateral transitions, and more. In addition, she assists lawyers who are forming or restructuring their law firms, including drafting partnership agreements, advising on compensation structures, and establishing law firm policies and procedures.  She also represents lawyers and law firms in disciplinary proceedings, disqualification motions, malpractice cases, partnership disputes, and other disputes relating to the practice of law. 

Ms. Hyland serves as the Chair of the New York Women’s Bar Association Ethics Committee. She is the immediate past Chair of the Committee on Professional Ethics of the New York City Bar Association and she now serves as a member of a supervisory committee that provides guidance to the New York City Bar’s 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, 2017 and 2018 editions of Simon’s New York Rules of Professional Conduct Annotated. 


Nur-ul-Haq is US Privacy Counsel at NBCUniversal, where he advises on issues relating to privacy and data protection for the company’s portfolio of brands, including its sports, news, film and entertainment divisions, as well as its movie ticketing and theme park businesses.  Nur also provides privacy guidance in the context of internal company operations, including human resources and corporate sourcing.

Prior to joining NBCUniversal, Nur was a staff attorney in the Northeast Region of the Federal Trade Commission, where he oversaw and participated in investigations and litigations involving mergers, anticompetitive conduct, and unfair and deceptive business practices directed at consumers.  While at the FTC, Nur served on the trial team in the FTC’s antitrust litigation against the Intel Corporation and also obtained a multimillion dollar judgment in federal District Court for the deceptive advertising of a purported diet aid in FTC v. Bronson Partners.  In addition to his law enforcement and litigation duties, Nur frequently spoke to consumer and business groups as well as the news media on various topics, such as identity theft, privacy and data security, and online consumer fraud.

Nur is a graduate of Boston University School of Law (cum laude) and Georgetown University.  He is a member of the American Bar Association Sections of Antitrust Law and Science and Technology Law, the Massachusetts Bar Association, the New York State Bar Association, and the International Association of Privacy Professionals.


Primary Areas of Practice:  New gTLDs and domain names, Internet-related trademark matters, trademark advice, prosecution, litigation, and transactions

Law School/Graduate School:  University of Georgia School of Law, J.D., cum laude, 1995

Work History:  Covington 1995-present

Professional Memberships:  President, ICANN Intellectual Property Constituency


Steve is a partner in the Washington, DC office, and is a member of the electrical-mechanical practice group. He has more than 20 years of experience in all aspects of intellectual property law, including federal district court jury trials, appeals to the CAFC, bench trials at the ITC, patent prosecution, reissue, re-examination, opinions relating to validity/ infringement/enforceability, general client counseling and the strategic management and enforcement of large domestic and international patent portfolios.

He handles patent matters in the electrical and mechanical sciences, including vehicle lighting, on and off road tire construction, vehicle body and vehicle information systems, and a broad range of other automotive technologies. Steve also has significant experience in sports related technologies, especially in golf ball/club construction.

Steve continually works with clients to maximize and leverage the value of their intellectual property portfolios and to assist them in taking full advantage of US laws. He provides frequent lectures and seminars on topics relating to U.S. Patent law and USPTO practice and procedure.

Primary Areas of Practice: Intellectual Property pertaining to Electrical/Mechanical patents, including IP Litigation, Inter-Partes and Post Grant Review (IPR/PGR) proceedings under the AIA, ITC Section 337, Patent Counseling and Patent Prosecution

Law School/ George Washington University School of Law

Under Graduate School: University of Miami

Work History:  Steve has more than 20 years of experience in all aspects of intellectual property law, including district court jury trials, appeals to the CAFC, bench trials at the ITC, IPR/PGR proceedings under the AIA, patent prosecution, reissue, re-examination, opinions relating to validity/infringement/enforceability, client counseling and strategic management and enforcement of large domestic and international patent portfolios.

Professional Memberships:
American Intellectual Property Law Association (AIPLA)
International Association for the Protection of Intellectual Property (AIPPI)

American Bar Association (ABA)

Tau Beta Pi

Pi Tau Sigma

International Intellectual Property Law Association

American Society of Mechanical Engineers

District of Columbia Bar Association - Patent, Trademark and Copyright Law Section


Jonathan King is Chairman of Cowan, Liebowitz & Latman.  He has handled intellectual property litigations in a wide range of industries, including music, fashion, sports, pharmaceuticals and healthcare, software, advertising, licensing, publishing and various consumer products. His practice encompasses the full gamut of intellectual property subjects, including trademarks, copyright, trade secrets and the licensing of intellectual property. He regularly tries copyright and trademark infringement cases in the federal courts and handles opposition and cancellation actions before the Trademark Trial Appeal Board.

Jonathan’s engagements have included a number of landmark intellectual property matters, including some of the first cases involving the use of trademarks as internet keywords, and the application of copyright law to the “resale” of digital files. He also has extensive experience in the design and effective use of use of consumer surveys in Lanham Act litigation, and has deposed and examined at trial many of the leading market research experts. 

HONORS & RECOGNITIONS

“Cowan is by far the best firm we’ve worked with and Jonathan Z. King is the principal reason. . . .In [one] case . . . the company threw a ton of money and resources against us, with a large trial team . . . but Jonny simply ripped them apart with his courtroom abilities and his sharp analysis of trademark law supporting our case.  He’s so smart and really understands our business, but is also incredibly unpretentious and down-to-earth.”  2018 Law.com

Jonathan King with Richard Mandel "when teaming up they are the best of the best and achieve exceptional results, time and time again."  2018 WTR 1000 - The World's Leading Trademark Professionals

  • Recognized by The Legal 500 in Trademark Litigation and Copyright Litigation (2013 - present)
  • New York "Super Lawyers" in Intellectual Property Litigation (2007 - present)

COMMUNITY & PROFESSIONAL ACTIVITIES

  • Member, Copyright Society of the United States
  • New York State Bar Association
  • Professional jazz pianist with three CDs to his credit

EDUCATION

  • Harvard University Law School (JD 1991, cum laude)
  • Princeton University (BA 1987, summa cum laude; Phi Beta Kappa)


John H. Zacharia is the Founder of Zacharia Law PLLC, a law firm dedicated to helping the victims of cybercrime and intellectual property crime protect their rights. Previously, Mr. Zacharia was the Assistant Deputy Chief for Litigation with the Computer Crime and Intellectual Property Section (CCIPS) of the United States Department of Justice’s Criminal Division.  While there, he supervised all the intellectual property (IP) and cybercrime prosecutions by the section’s attorneys.  In his 12 years at CCIPS, John became one of the most experienced federal prosecutors of IP crimes in the United States, and he was CCIPS’ lead counsel in the prosecution of many significant large-scale, multi-jurisdictional cybercrime and intellectual property crime cases.  For example, he prosecuted and obtained jury verdicts in one of the largest counterfeit goods prosecutions in U.S. history, and he successfully obtained the first-ever conviction and sentencing of a cyberlocker operator. John has prosecuted organized copyright piracy groups in which defendants have received the maximum sentence for committing criminal copyright infringement. John successfully handled federal appeals brought by defendants convicted of trademark and copyright crimes.  John has also participated extensively in domestic and international IP enforcement training and outreach, having presented in over 150 speaking engagements in the United States and overseas to teach prosecutors and law enforcement officials how to investigate and to prosecute intellectual property crime cases.  Prior to founding Zacharia Law PLLC, John was an Attorney Advisor to three different heads of the Justice Department’s Drug Enforcement Administration. Before joining CCIPS, John was a Trial Attorney with the Federal Programs Branch of the Justice Department’s Civil Division, where he specialized in IP enforcement issues as well as constitutional and administrative law litigation on behalf of the United States.  While there, John successfully handled several significant IP cases of first impression, including cases where he successfully defended against challenges to the constitutionality of the Copyright Act and the Digital Millennium Copyright Act.  Prior to joining the Justice Department, John was a Senior Associate at the law firm of Howrey & Simon.  John began his legal career as an associate at the law firm of Carlton Fields.


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.