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Advertising Law Institute 2014


Speaker(s): Angela Tiffin, Brian G. Murphy, Holly A. Grochmal, Jordan Mitchell Heinz, Liisa M. Thomas, Matthew D. Gold, Nerissa Coyle McGinn, Randal M. Shaheen, Robert H. Newman, Robert Laplaca, Sheila A. Millar, Tsan Abrahamson
Recorded on: Oct. 9, 2014
PLI Program #: 55071

 

Services

Advertising, Consumer Protection, & Entertainment Disputes, Advertising, Promotions & New Media Counseling & Transactions, Brand Enforcement/Trademark Litigation, Intellectual Property, IP/IT Transactions & Licensing, Privacy & Data Security, Trademark Prosecution

Sectors

Food, Beverage & Agriculture, Intellectual Property, Media & Entertainment, Pharmaceuticals & Medical Devices, Retail & Consumer Products, Sports

Admissions

Illinois, District of Columbia

Education

University of Chicago, JD 1996

Haverford College, BA 1993

Fluencies

French

Liisa Thomas, a partner based in the firm’s Chicago and London offices, is the chair of the firm’s Global Privacy and Data Security Practice. Her clients rely on her ability to create clarity in a sea of confusing legal requirements and describe her as “extremely responsive, while providing thoughtful legal analysis combined with real world practical advice.” According to Chambers, clients are quick to praise her “hard-working, business-focused, and detail-oriented approach to matters” and describe her as “keeping [clients] one step ahead of where [they] need to be.” 

Ms. Thomas, who was born in Finland and has lived in France, Egypt, and Spain, frequently coordinates global efforts in the privacy area for her clients. Clients value her global insights and familiarity with business systems outside of the United States. With Ms. Thomas’s assistance, her clients—which include major consumer brands, advertising agencies, and consumer research companies—are able to navigate thorny data breach disclosure issues, use emerging interactive advertising techniques, and create compliant security programs all while effectively managing their legal risks. She assists clients with a variety of legal issues, including:

  • Identifying and investigating data breach incidents
  • Coaching clients through the data breach notification process
  • Creating information protection and security programs
  • Simplifying privacy policies to better protect corporate clients
  • Developing compliant text message and mobile marketing campaigns
  • Navigating the complex legal world of online behavioral advertising
  • Ensuring compliance in social media promotions
  • Counseling on children’s advertising and privacy issues

Ms. Thomas has been recognized by the Leading Lawyers Network, Chambers, and Legal 500, and was recently selected to Cybersecurity Docket’s inaugural “Incident Response 30,” which honors 30 incident response professionals critical to managing data breaches. She has also been honored for her leadership in the legal field by the Illinois Diversity Council (awarding her a Multicultural Leadership Award). In 2014, Ms. Thomas was named by CorporateLiveWire as the Illinois Advertising Lawyer of the Year and as one of 15 practitioners nationwide in the Minority Corporate Counsel Association’s Annual List of Rainmakers. Ms. Thomas is often quoted by the press and has spoken and written extensively on cutting-edge privacy law matters, including authoring the top-selling Thomas on Data Breach: A Practical Guide to Handling Worldwide Data Breach Notification, described as “a no-nonsense roadmap for in-house and external practitioners alike.”

Ms. Thomas is currently an adjunct professor in Northwestern University’s Masters of Science in the Law Program, and has taught privacy courses at several other Chicago-area law schools, including DePaul University and the University of Chicago. Ms. Thomas is a member of the firm’s Diversity Committee, chairs the International Trademark Association Bulletins Committee, and serves on the Board of Trustees of the Chicago Symphony Orchestra.

Ms. Thomas received a B.A. in History from Haverford College and a J.D. from the University of Chicago Law School. She is an avid sailboat racer and plays violin in the Chicago Bar Association Symphony Orchestra, an orchestra made up of lawyers and judges.


Angela Tiffin is a senior staff attorney with the Children's Advertising Review Unit (CARU), the self-regulatory program that promotes truthful and responsible children’s advertising.

She is responsible for evaluating child-directed advertising in all media as well as pre-clearing advertising at various stages of development to ensure compliance with the program Guidelines and other relevant laws. She has written a number of decisions involving food, toys and online media in addition to assessing online services for admission to CARU’s online privacy Safe Harbor Program.

Ms. Tiffin graduated with a B.F.A. from Concordia University in Montreal, Quebec and received her L.L.B. from the University of Windsor, in Windsor, Ontario, Canada.


Holly Grochmal is the Lead Interactive Advertising Attorney for Pandora Media, Inc., where she leads a team responsible for supporting Pandora’s advertising products and revenue operations.    She regularly is involved in negotiating commercial transactions with top advertising agencies and advertisers in connection with Pandora’s digital advertising platforms.  In addition, she frequently negotiates complex agreements with ad networks and ad tech vendors.  Holly also provides guidance on advertising issues and works with the Pandora sales and product teams to develop company policies.

Holly also advises on domestic and global advertising initiatives for legal and regulatory compliance, including privacy and data use.    

Prior to joining Pandora, Holly was an Assistant General Counsel at E. & J. Gallo Winery where she focused on advertising law, social media and marketing sponsorships and promotions as well as alcohol beverage law.  Before joining Gallo, Holly spent 9 years in private practice as a corporate associate at Shearman & Sterling LLP (Paris, France and Menlo Park) and Coblentz, Patch, Duffy & Bass working on a wide-variety of commercial matters and corporate securities transactions.  Holly holds a J.D. cum laude from Cornell Law School and a B.A., magna cum laude from Colby College.


Jordan Heinz currently practices in both the intellectual property and general litigation departments.  Within the intellectual property department, Jordan focuses on Lanham Act litigation (trademark, false advertising and unfair competition) and trade secret litigation across a broad range of industries. Within the general litigation department, Jordan focuses on complex commercial litigation matters, including employment and consumer fraud litigation.  Jordan also helps coordinate the Firm’s pro bono program and currently serves as a Chicago Pro Bono Coordinator.

Representative Matters

  • Counsel for technology startup company in two lawsuits alleging the client falsely advertised and violated the Telephone Consumer Protection Act (TCPA).Won early summary judgment in one suit and a voluntary dismissal with prejudice in the other suit after defeating class certification.
  • Counsel for Mammoth Mountain Ski Area in lawsuit alleging violation of the TCPA; matter is pending.
  • Counsel for Syngenta AG in multi-district litigation alleging false advertising and other claims related to Syngenta’s commercialization of a genetically-modified corn seed.
  • Trial counsel for a leading property and casualty insurer in a case brought by the EEOC and a putative class of former insurance agent employees alleging ADEA, ERISA, breach of contract and breach of fiduciary duty claims; matter is pending.
  • Counsel for Discover Financial Services in trademark infringement lawsuit involving graphic design element brought by ING Bank.Negotiated favorable settlement for client at close of fact discovery.
  • Trial counsel for WASH Multifamily Laundry Systems in arbitration involving trade secrets, breach of contract, unjust enrichment and related unfair competition claims.Client found not liable on all claims.
  • Represented medical products company Covidien (formerly Tyco Healthcare) in trademark infringement case against commercial bank accused of using registered and non-registered design marks.Negotiated favorable settlement for Covidien.
  • Trial counsel in successful false advertising suit on behalf of Equal no-calorie sweetener alleging that Splenda no-calorie sweetener misrepresented its artificial product as natural and misled consumers.After a five-week federal jury trial, the parties reached a confidential settlement after the jury requested damages expert reports and a calculator after only three hours of deliberations.
  • Trial counsel for DIRECTV in false advertising lawsuit related to high-definition picture quality.Handled complex survey testing critique as part of false advertising claim.Case settled after the preliminary injunction hearing and an appeal to the United States Court of Appeals for the Seventh Circuit.

Distinctions

2010-2015 “Illinois Rising Star” by Super Lawyers magazine

2008-2015 Kirkland & Ellis Pro Bono Service Award

2015 Public Interest Law Initiative (PILI) Distinguished Alumni Award

Seminars

Panelist, “That's Entertainment! Maximizing the Benefits of Branding,” PLI’s Advertising Law Institute 2013, September 2013

Speaker, International Trademark Association Annual Meeting, May 10-14, 2014


Nerissa Coyle McGinn’s practice focuses on matters involving the convergence of advertising and promotions, emerging media, technology, and privacy law as well as intellectual property law, focusing on trademark clearance and counseling.

Ms. McGinn works with many of the best-known brands in the country, helping her clients develop new brand assets and assisting them in the protection and exploitation of their intellectual property in advertising and marketing. Ms. McGinn advises clients in all forms of advertising and promotions initiatives, including sweepstakes review, copy review, and promotion design and fulfillment, with a particular emphasis on internet and interactive advertising and promotions. She also specializes in legal services for clients producing content for mobile devices, handling a variety of intellectual property matters in connection with video game applications. In addition, Ms. McGinn assists clients on the privacy implications of new communication strategies, mobile applications, location targeting, and information sharing.

Ms. McGinn’s diverse roster of clients includes Turner Broadcasting and its programming properties, Wm. Wrigley Jr. Company and its confection brands, professional sports teams such as the New York Giants and the Washington Redskins, and other major advertisers and advertising agencies.

As a member of the International Trademark Association (INTA), Ms. McGinn has been active in helping launch INTA’s law student ambassador program and a related scholarship for trademark lawyers to attend the annual meeting. At Loeb & Loeb, she serves as an active member of the firm’s Diversity Committee, heading the Affinity Group which promotes attorneys of color within the firm.

Practice Areas

  • Advertising and Promotions
  • Branded Entertainment
  • Intellectual Property
  • Trademarks and Copyrights
  • Sports
  • Interactive Entertainment
  • Litigation
  • Advanced Media and Technology
  • Digital and Social Media
  • Privacy, Security and Data Optimization
  • Consumer Action and Regulatory Defense

Representative Experience

  • Representation of Turner Broadcasting Cartoon Network, CNN, truTV, TBS and Turner Sports in connection with trademark clearances for the media company's new shows, web properties, interstitials and sweepstakes.
  • Represent the Los Angeles-based advertising agency Pitch in IP and advertising matters related to the agency's representations of companies such as Burger King Corporation, Asics America and Nickelodeon.
  • Represent Silver Chalice Ventures, which co-owns and operates new media based properties such as the ACC Digital Network and Total College Sports, in IP matters related to the agency's television-style video properties distributed to all connected devices such as smart phones, tablets and advanced television platforms.

Distinctions

  • Named "Illinois Super Lawyer" in Intellectual Property and Media and Advertising by Thomson Reuters (2014-2016)
  • Recommended “Top Lawyers in Illinois” in Intellectual Property Law, Advertising & Media Law, Arts, Entertainment & Sports Law, and Copyright & Trademark Law, Leading Lawyers Network, a division of Law Bulletin Publishing Company (2011-2015)
  • Named in The Legal 500 US in Technology: Data Protection and Privacy, published by Legalease Limited and John Pritchard (2013 edition)
  • Named an “IP Star” by Managing Intellectual Property magazine (2013-2015); Listed in "IP Stars-Top 250 Women in IP" (2013) 
  • Named among "Top 100 Under 50 Diverse Executive Leaders" by Diversity MBA Magazine (2015)

Affiliations

  • Co-Chair of the Student Member Project Team, International Trademark Association
  • Member, Promotions Marketing Association
  • Member, Chicago Bar Association
  • Member, Asian-American Bar Association
  • Adjunct Professor, Intellectual Property Legal Writing; U.S. Advertising Law, John Marshall Law School
  • Former Instructor, Undergraduate Trial Advocacy, University of Illinois

Education

Harvard Law School, J.D., 1997, cum laude

University of Illinois at Urbana-Champaign, B.A., 1994, magna cum laude, Phi Beta Kappa

Bar Admissions

Illinois, 1997

Court Admissions

U.S. District Court for the Northern District of Illinois, Trial Bar

U.S. District Court for the Central District of Illinois

U.S. Court of Appeals, Seventh Circuit

U.S. Supreme Court


Randal Shaheen is a partner in Venable’s regulatory and advertising and marketing practice groups. He represents clients before numerous regulatory agencies including the Federal Trade Commission, state attorneys general, the Consumer Financial Protection Bureau, and the National Advertising Division.

Mr. Shaheen has significant experience handling multijurisdictional matters and advising clients in all areas of advertising and marketing. He has worked on numerous matters related to "green" claims, dietary supplements, "Made in USA," privacy and data security, marketing to children, health and performance claims, weight loss, claims interpretation, comparative claims, and the use of surveys.

Mr. Shaheen is a graduate of Harvard Law School where he was the Notes Chair for the Harvard Law Review. He served as Co-Editorial Chair for the 2011 Review of Consumer Protection Law Developments and is the co-editor of a blog about issues critical to advertising and consumer law entitled allaboutadvertisinglaw.com which can be accessed at www.allaboutadvertisinglaw.com.


Robert Newman is a partner in Winston & Strawn LLP’s advertising, marketing, and privacy law group and concentrates on counseling clients in copyright, trademark, marketing, e-commerce, privacy, and other intellectual property matters. Rob advises clients in a broad range of industries on all aspects of their communications with the public, the commercialization and enforcement of their intellectual property portfolios, and litigation risk avoidance in connection with intellectual property, marketing, and emerging technologies. Rob is an adjunct faculty member of Chicago-Kent College of Law and The John Marshall Law School’s Center for Intellectual Property, Information & Privacy Law. Rob teaches courses on advertising and marketing law, e-commerce law, and online behavioral targeting and tracking.

Rob counsels clients on interactive and digital advertising matters, including, behavioral advertising, “big data” matters, mobile marketing, digital media buy agreements, and programmatic advertising matters.  He also advises clients on advertising clearance and claim substantiation for traditional and interactive advertising campaigns, and he advises clients on consumer protection matters, the design and implementation of promotions, and various new media matters, including social media, e-commerce, and user-generated content.  Rob also frequently handles responses to high profile data breaches and assists clients in the assessment and development of internal data privacy and security policies and procedures.

Rob has extensive experience advising content creators and content providers on the protection and commercialization of their music, literary, and other creative properties, as well as negotiating music and content licenses and high-level talent agreements for use in advertising and branded entertainment. He also regularly advises clients on the selection and availability of trademarks, counsels client on domain name and new gTLD matters, assists with the development of branding strategies, handles trademark prosecution, and manages trademark portfolios for clients in a broad range of industries.

In addition, Rob’s experience includes copyright, trademark, false advertising, domain name, defamation, right of publicity, and unfair competition disputes and litigation. Rob also handles UDRP proceedings, SAG AFTRA disputes, and matters before the National Advertising Division and the Trademark Trial and Appeal Board.

Since 2010, Rob has served as a chair of the American Bar Association’s Internet and Privacy Subcommittee and he currently serves as a vice chair of the ABA’s Trademark Legislation Committee.  Rob is also the former chair of the ABA’s Trademark Transactions Committee and former Annual Review Vice-Chair of the ABA’s Copyright Division.  Rob is a member of the Brand Activation Association, the International Trademark Association (Internet Committee and Government Advisory Committee Outreach Subcommittee), the Recording Academy, and the International Association of Privacy Professionals.

Rob was recently named an “Emerging Lawyer” by Leading Lawyers in Arts, Entertainment & Sports Law, Advertising & Media Law, and Intellectual Property Law.


Sheila A. Millar, a partner with the law firm of Keller and Heckman LLP, counsels corporate and association clients on regulatory compliance and public policy issues. 

Ms. Millar advises clients on an array of advertising, marketing and privacy issues.  She represents clients in legislative, rulemaking and self-regulatory actions, advises on claims, and assists in developing and evaluating substantiation for claims. She also has extensive experience in privacy, data security and cybersecurity matters.  She helps clients develop website and app privacy policies, data security and access procedures, manage trans-border data flows, respond to data breaches and create training programs. She assists clients on digital media issues, helping them develop social media, blogging and user-generated content policies, and to understand advertising technology and online behavioral advertising issues.  Ms. Millar also works with clients to navigate the array of federal and state requirements governing contests and sweepstakes, and advises on gift cards, coupons and rebates.  She represents clients on advertising and privacy matters before the Federal Trade Commission (FTC), the Children’s Advertising Review Unit (CARU), the National Advertising Division (NAD), as well as in connection with investigations by state regulatory bodies and Attorneys General.

Ms. Millar counsels consumer product and industrial manufacturers, distributors and retailers on risk management and product safety strategies.  She represents them in legislative and regulatory policy matters, and advises on compliance with laws administered by the Consumer Product Safety Commission (CPSC), as well as green chemistry and other product safety laws. Ms. Millar's environmental regulatory expertise includes ozone depletion, global warming, clean air matters, energy use and green claims.

Ms. Millar is a vice chair of the International Chamber of Commerce (ICC) Marketing and Advertising Commission, and chairs its Working Group on Sustainability. Ms. Millar has special expertise in all issues related to the sale, advertising and marketing of children's products, and has appeared at FTC workshops on advertising literacy, children's privacy and self-regulation. Ms. Millar is a frequent speaker and author.


Tsan Abrahamson's practice focuses on strategic counseling in the areas of social media, sweepstakes, intellectual property, advertising, trademark clearance, trademark and copyright prosecution, licensing, and other business transactions.  She also manages the adverse proceedings practice at the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.

Tsan has an extensive practice in the area of marketing promotions, including social media promotions, such as on Facebook and Twitter, gift card and gift certificate marketing, print and online sweepstakes, contests, give-aways, warranties, rebates, and coupon promotions.  She also advises on corresponding privacy issues related thereto.

Tsan's advertising practice includes working with regulatory agencies to comply with federal guidelines, including new FTC guidelines regarding affiliate marketing, CAN-SPAM. and the Deceptive Mail Prevention and Enforcement Act. She also advises on ad campaigns, including script review, storyboard clearance, and network media placement.

Tsan also has special expertise in children's marketing issues, including promotions and claim substantiation, COPPA compliance, and advertising to children in print and television media.  She has been a SuperLawyer since 2009, and is in Who’s Who Legal for her expertise in Internet and E-commerce matters.  She was inducted into the American Law Institute in 2007.

In addition to her advertising and promotions work, Tsan has successfully prosecuted and defended thousands of trademarks with the U.S. Patent and Trademark Office and internationally, including difficult sound and sensory marks and design marks. She has registered hundreds of copyrights at the U.S. Copyright Office and overseas.

Tsan’s professional affiliations include the International Trademark Association, the Brand Activation Association, and the American Bar Association.  She is an adjunct professor of law at USF School of Law.

Prior to Cobalt LLP, Tsan was worldwide intellectual property and licensing counsel for LeapFrog Enterprises, Inc., She also practiced for 7 years with the San Francisco firm of Cooley Godward Kronish (formerly Cooley Godward), where she represented video game makers, online auction houses, pharmaceutical companies, and numerous other large companies. Tsan also spent 8 years as a chef.

Tsan completed her undergraduate work at Dartmouth College, and received both her JD and MBA from the UCLA School of Law and The Anderson Graduate School of Management, respectively. She is recognized by Strathmore's Who's Who for leadership and achievement in the law, and has been selected as a California Super Lawyer.


Brian G. Murphy is a partner in the Advertising and Marketing group at Frankfurt, Kurnit, Klein & Selz in New York.

Mr. Murphy counsels advertising agencies, advertisers, and entertainment companies as they develop and produce advertising, promotions and entertainment content across all media.

His practice focuses on copyright, trademark, right of publicity/right of privacy, false advertising, unfair competition, and defamation. Mr. Murphy negotiates and structures celebrity talent agreements, agency-client contracts, sponsorship arrangements, product integration deals, and music, film, and other content licenses. He assists clients in the development and execution of complex contests, sweepstakes, and charitable promotions and programs, including those involving user-generated content that are developed for social media, interactive, and mobile platforms. In addition, Mr. Murphy regularly advises clients on the development and production of branded entertainment projects, such as television shows, films, live events, electronic games, webisodes, mobisodes, and websites.

Mr. Murphy is a frequent and popular speaker on advertising, entertainment, and intellectual property issues. In the recent past, he has given presentations at the 2009 American Bar Association Annual Meeting ("Listen to the Sound of Music: Anatomy of a Copyright Infringement Lawsuit"), the New York City Bar Association’s Current Developments in Copyright Law Program ("The Wonderful World of User Generated Content"), the Significant Developments in Intellectual Property Law of Computers and Cyberspace at the University of Dayton School of Law ("Fair Use 2009: Should the Internet, Digital Media and User Generated Content Change Our Analysis?"), the Copyright Society ("Copyright, Lanham Act, Right of Publicity, and Contract Claims Arising from the Use of Music in Commercials"), the New York State Bar Association ("Keeping it Real: The Use of People, Places, and Things in Works of Entertainment"), the American Conference Institute’s (ACI) "Branded Integration Deals" conference ("Working with Talent and Talent Unions"), ACI’s 21st Corporate Counsel Forum on Advertising Law ("Leveraging Rights and Maximizing Bargaining Power When Negotiating the Agency/Client Agreement"), and New York Law School ("The Slinky Dress: Secondary Liability and the Future of Digital Innovation").

Mr. Murphy is an Adjunct Professor of Law at New York Law School where he teaches courses on entertainment and copyright law. Mr. Murphy previously taught at Fordham University Law School and has lectured at the Parsons School of Design. He is a member of the Copyright Society of the U.S.A.; the Entertainment, Arts & Sports Law Section of the New York State Bar Association; the Promotion Marketing Association; and the American Bar Association Intellectual Property Section’s Special Committee on Promotions and Marketing Law.

Mr. Murphy clerked for the Hon. Leonard B. Sand, United States District Judge in the Southern District of New York. He is admitted to practice in New York.


Matthew Gold is a staff attorney with the Federal Trade Commission's Western Region in San Francisco.  After graduation from law school in 1985, Mr. Gold joined the Federal Trade Commission's Washington, D.C. office.  Since moving to the Western Region in 1990, Mr. Gold has worked on numerous deceptive advertising matters, including cases against Apple Computer, CompUSA, Inc., Gateway, Inc., Oreck Corporation, Beiersdorf, Inc., L’Occitane, Inc., Nissan North America, Inc., and Sony Computer Entertainment America, LLC.  He has also been involved in cases against Hershey Foods Corporation and the American Popcorn Company, two of the Commission's first actions enforcing the Children’s Online Privacy Protection Rule.

Mr. Gold has participated in numerous FTC workshops and industry forums, giving presentations on general advertising, gift cards and product rebates, online privacy, and the application of FTC advertising law to e-commerce.  In November 2005, Mr. Gold traveled to Vietnam to participate in two consumer protection conferences designed to train officials from the Vietnamese Ministry of Trade.


Rob leads the Firm's Promotion Law practice, which includes sweepstakes, skill contests, instant win games, internet and mobile marketing promotions, trade promotions, and consumer offers. Rob counsels well-known brands, as well as advertising and marketing companies, from concept development through implementation and fulfillment.

Rob also counsels clients on cause marketing programs, including commercial co-ventures and charitable promotions. He represents both noted charities and major brands. He works with clients on program concept, contract drafting and review, state registration, and advertising. Rob has worked on many national and worldwide commercial co-ventures, including programs involving retail sales, online sales, charitable events and popular movie releases.

His practice also includes complex commercial litigation including matters involving corporate, contract, trademark and copyright law, and post-employment disputes. Rob’s practice includes both state and federal courts in Connecticut and New York and he has been admitted pro hac vice to litigate claims in federal courts of Illinois, Florida, Massachusetts and Minnesota. He also has extensive experience in commercial arbitrations and in state and federal appellate practice. Rob has had a number of successes during this career, including recently obtaining a $5 million arbitration award for his client who was a foreign agent in Thailand for a U.S. aircraft leasing company.

Rob graduated from Columbia College in 1989 with a B.A. in economics and from Brooklyn Law School in 1993. Rob lives with his wife and two children in Weston, Connecticut, where he is a state certified firefighter with the town's volunteer fire department, a role in which he was profiled in the Connecticut Law Tribune.