Gibney Attorneys Recognized in 2022 Super Lawyers

Gibney attorneys were recognized in New York Super Lawyers 2022. Super Lawyers recognizes lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The selection process includes independent research, peer nominations and peer evaluations.

Gibney attorneys recognized include:

Intellectual Property
Brian Brokate
Jeffrey Dupler
Beth Frenchman-Gellman

W. Lee Kinnally, Jr.

Stephen J.O Maltby

The following attorneys were also recognized as 2022 New York Metro Rising Stars:

Kristen J. Heckman, Immigration
Zarina H. Syed, Immigration
Maja Szumarska, Intellectual Property

The Three Things Student Athletes Should Consider for Every NIL Contract

With student athletes now able to profit from their name, image and likeness (NIL), athletes are taking advantage of opportunities to partner with brand sponsors. When entering into contracts, athletes need to review carefully the terms of the agreement to protect their personal brand. Here are three key considerations to keep in mind when considering any contract:

  1. Keep the contract terms and duration short.
    Any contract and associated fees remain binding for the full duration of the contract. It is important for student athletes signing an agreement to keep in mind that the fee is not going to change. A fee should be commensurate with an athlete’s experience but every athlete’s experience level and value is going to change over time. Therefore, student athletes should avoid long agreement terms until the full value of your endorsement is known. This is typically further into a professional career and even then, long-term licenses should be considered carefully, as entering into a long-term agreement puts you at risk of having to honor an agreement that does not reflect your current value.

    Keep your contract term short. The duration of the contract should never extend beyond the length of your remaining time participating in the athletic program at your current institution.

  2. Narrow the scope of rights.

    It is also important to understand the scope of rights that your contract will cover. When entering a license agreement as an athlete, it’s best to keep the scope of rights as narrow as possible to increase your opportunities for economic benefit.

    Avoid contracts that give the other party the exclusive right to use your NIL in a broadly defined (or vaguely defined) group of products.  And never grant NIL rights for products that the other party does not actually sell.

    For example, when partnering with an energy drink company, you don’t want to grant that company exclusive rights for all drinks. If you narrow the focus, such as NIL exclusivity for energy drinks, it allows you to work with other beverage brands in the industry that are not direct competitors. (Don’t lock yourself out of the soda category by giving exclusive rights to a company that does not sell soda.)

    Avoid licensing agreements that give the brand owner exclusive NIL access in a broad category. By narrowing the scope, athletes can work with multiple brands within the same industry and increase their endorsement opportunities.

  3. Limit your time commitment.

    As part of endorsement agreements, it is standard for brands to use athletes in marketing campaigns and ads. This may require time commitments for photoshoots or fittings that are needed. But as part of the contract, athletes may also be asked to do in-person events or a meet and greet. These additional obligations should always be clearly defined, and an appropriate per diem payment agreed to, before signing any agreement to avoid open-ended requests.

    Make sure that all additional conditions are clearly outlined, including payment terns. Protect your time and prioritize your school obligations by requesting that they take place in the off season.

Keeping these tips in mind will help to protect your personal brand. As part of all contract review, it is also important to be in compliance with state and NCAA rules. Different states have their own NIL guidelines so it is important to understand the guidelines based on where the athlete is attending school. Athletes under the age of 18 must also comply with other state laws. Student athletes should always consult with an attorney to make sure that they are compliant with all applicable regulations and guidance, and to set up the best contracts possible for long-term success.

Brian Brokate to Speak on NFTs, Blockchain and Trademark Considerations

Intellectual Property Chair Brian Brokate will speak at the Practising Law Institute’s Intellectual Property Law Institute 2022 on September 15-16, 2022. The program provides developments on recent trends in patents, copyrights, trademarks and trade secrets.

Brian will speak on the panel “Trademark Aspects of NFTs and Other Blockchain Uses” on Day 2 of the program.

This session will provide insight into issues surrounding NFTs, Blockchain and trademarks including an overview of NFTs, how brands are using NFTs, registering and enforcement of trademarks for NFTs, worldwide use and issues/considerations.

Learn more and register here.

Brian Brokate to Speak on Digital Fashion and Brand Protection

Brian Brokate, Chair of Gibney’s Intellectual Property Group, will be a panelist at the Strafford webinar “Digital Fashion and Brand Protection: Leveraging Copyright, Trademark, and Trade Dress; NFTs; Ownership Challenges” on Tuesday, June 21, 2022 from 1:30 – 2:30 pm EDT.

This CLE webinar will guide IP counsel on protecting fashion intellectual property in the metaverse. The panel will discuss the various forms of IP that can protect fashion in the digital world of virtual reality and gaming and with respect to non-fungible tokens (NFTs) and the challenges of enforcement. They will review past case law decisions and pending cases and developments which will establish new precedent for future protection and enforcement of fashion intellectual property in the metaverse. The panel will also discuss the risks of failing to protect the brands and offer best practices for protecting brands in digital fashion.

Topics include:

  • Protecting digital fashion with IP laws
  • Copyright: What can you protect?
  • Trademark and trade dress in the metaverse
  • Domain names in the metaverse
  • Design patents
  • Best practices to enforce IP rights in the metaverse
  • Hurdles to protecting brands in the digital world and what strategies can be employed to enhance protection

For more information, visit the event page.


Automated IP Enforcement: Moving Towards Better Results

Last year in our article “What Will Post Pandemic IP Enforcement Look Like,” we looked at the future of enforcement and what strategies may emerge and take root post-pandemic. As it appears we are moving to an endemic stage, it may be a good time to revisit some key ideas.

Over the course of the last two decades, online brand protection has changed tremendously. I recall the days when we received monthly reports of violative goods on a single platform on which we then took action. Today, we monitor a multitude of platforms on a daily basis for a variety of clients. At various times, our clients have asked us to utilize specialized software or services to assist in the effort. We have had the opportunity to sample the full gamut of providers.

As these monitoring services have improved over the years, they have performed better. However, even with various iterations and implementations of artificial intelligence, none we have utilized are able to fully meet the enforcement challenge. Absent the presence of human intervention, the net cast is often too broad and cannot fully discern the subtleties of identification. Previously, we discussed the importance of data. However, if the volume or content of that data impedes the enforcement process, additional steps must be taken.

I am all for automating as much of the process as possible with the caveat that the results are able to be acted upon immediately and not encumber the takedowns. Unfortunately, a fully automated process seems to routinely produce many false positives. Our experience is that trained personnel are needed to cull the results and better identify actionable content. This is done to avoid possibly costly mistakes by removing genuine or even unrelated product.  While technology and the data it can produce represent a significant step forward in the battle against counterfeit goods, do not underestimate the need for a review process that ultimately helps the software perform better. That review process may also help a brand better define the scope of the problem. If initial results appear to indicate 10,000 violative items on a platform, further review may reveal the number is actually in the low hundreds.

Working with your software provider and highlighting the issues you may be having certainly does have an impact.  Algorithms can be changed and parameters altered to create a better and more refined user experience. Many of the software vendors will work closely with you to understand the issues and implement necessary changes. Again, it is up to the brand representative to monitor and provide ongoing feedback. Each brand has different needs and strategies that cannot be accommodated by one size fits all products. Luckily, we have reached a point where suggestions and considerations can be incorporated quickly in pulling actionable results.

In the end, the data and utility of the correct (for your brand) enforcement platform can act as force multipliers for your efforts which may have been impacted by headcount or budget reductions. However, be an active user, willing to review and push for the best results. Technology is only as good as your knowledge and insight can push it to be.

Brian Brokate and Angelo Mazza to Speak at PLI’s Intellectual Property Rights Enforcement 2022

Intellectual Property Partners Brian Brokate and Angelo Mazza will speak at the Practising Law Institute’s Intellectual Property Rights Enforcement 2022 on January 7, 2022. The program provides developments on recent copyright and trademark cases and anticounterfeiting trends.

Brian will deliver the opening remarks and will speak on the “Anti-Counterfeiting Update” panel. Topics include direct liability, seizures and ex parte remedies, Recent trends and the checklist that should be followed when applying for a seizure order, contributory liability and noteworthy decisions in cases involving online marketplaces and on-demand printers, and a look at the most innovative and cost-effective enforcement strategies used by brands.

Angelo will speak on the panel “Current Government IP Enforcement Programs.” Topics will include DOJ-prosecuted IP crime, IP protection in light of technological advances, the impact of major cases on enforcement, developing trends and looming issues, Made in the USA claims for Covid-19 related products and Covid-related scams facing consumers and businesses.

Learn more and register.

Gibney Participates in InnovateNordics Summit 2021 for Emerging Businesses

Gibney is partnering with the Swedish American Chamber of Commerce for the InnovateNordics Summit 2021 & U.S. Acceleration Program on October 15, 2021.

InnovateNordics showcases top innovators focused on tackling today’s most pressing challenges while creating business and growth within the areas of clean- and foodtech from the collective Nordics including Sweden, Norway, Denmark, Finland and Iceland. The program is a deep dive into the tools and tricks for effective U.S. establishment and growth.

Gibney will discuss U.S. legal issues for emerging businesses. Attorney speakers include:

  • David Johnson – Immigration
  • Kristen Smith – Corporate
  • Maja Szumarska – Intellectual Property
  • Robert Tracy – Employment

Learn more.

Angelo Mazza Speaks on Tools of the Italian System for Intellectual Property Protection and Combatting Anticounterfeiting in the US

Gibney IP Partner Angelo Mazza recently spoke the webinar entitled “The Tools of the Italian System for the Protection of Intellectual Property and the Fight Against Anticounterfeiting in the US”. The webinar covered the many brand protection options, public and private, that exist under the American system. Angelo directed his comments, in Italian, to the importance of law enforcement training as part of an overall approach to brand protection.

Sponsored by the Embassy of Italy in Washington, the Italian Trade Agency and the Guardia di Finanza and conducted in English and Italian, the webinar was aimed at Italian brands interested in entering the US market for the first time and the use of laws to protect their products and intellectual property. Other speakers represented National IPR Center, Guardia di Finanza, the IACC and the Italian Trade Agency.

Intellectual property is a cornerstone for the US and other world economies. Understanding issues and procedures is important to secure success and to avoid the pitfalls and impact of counterfeit goods on a brand. Gibney’s IP team offers a comprehensive approach to brand protection which includes trademark registration, Customs recordation, online enforcement, law enforcement training and civil action. Mr. Mazza’s practice includes Customs issues, law enforcement training and cooperation and online monitoring and enforcement. He is fluent in Italian

Gibney Attorneys Recognized in New York Super Lawyers 2021

Gibney attorneys were recognized in New York Super Lawyers 2021. Super Lawyers recognizes lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The selection process includes independent research, peer nominations and peer evaluations.

Gibney attorneys recognized in 2021 include:

  • Brian Brokate, IP Litigation
  • Beth Frenchman – IP
  • Kristen Heckman, Immigration Rising Stars
  • Lee Kinnally, Business Litigation
  • Tao Li, Immigration Rising Stars
  • Stephen Maltby – Immigration
  • Jake Paul Minster, Immigration Rising Stars
  • Adam Sgro – IP Rising Stars
  • Zarina Syed, Immigration Rising Stars
  • Maja Szumarska, IP

Brian Brokate to Speak at PLI on Trademark Developments in Anticounterfeiting

Brian W. Brokate will speak at the Practising Law Institute’s Intellectual Property Law Institute 2021 event on September 28, 2021 on the “Trademark” panel.

He will focus on developments in anti-counterfeiting and combatting counterfeiters during an unprecedented era. Other topics will include:

  • Direct liability: An overview of the groundbreaking decisions from the past year including the recent trial court decision in Romag Fasteners, Inc. v Fossil, Inc.
  • Seizures and ex parte remedies: Recent trends and the checklist that should be followed when applying for a seizure order
  • Contributory liability
  • An update on the Ongoing Battle Against Online Printers: A discussion about the recent decisions in Atari Interactive, Inc. v Redbubble, Inc., LTTB LLC v. Redbubble, Inc. and Ohio State University v. Redbubble, Inc.
  • Landlord liability: A Review of the Second Circuit’s decision in Omega SA v. 375 Canal, LLC
  • Hot trends: A Look at Cases Brought by Online Marketplaces and Social Media Platforms against Counterfeiters
  • The rise of counterfeiting during the COVID-19 pandemic: What you need to know to protect your brand

For more information and to register visit the PLI website.