The CASE Act and the Trademark Modernization Act Webinar: New Opportunities and Risks for Companies and Brands

Webinar | May.13.2021 | 3pm - 4pm (Eastern Daylight Time)

Online Webinar

Orrick and Berkeley Center for Law & Technology are co-hosting The CASE Act and the Trademark Modernization Act Webinar: New Opportunities and Risks for Companies and Brands on May 13, 2021.

In this robust discussion, Orrick’s IP Team members Sheryl Garko, Bob O’Connell and Caroline Simons are joined by Stacey Lantagne, Associate Dean for Faculty Development at University of Mississippi School of Law, and Erin Michael, Senior Counsel at New Balance. The panel will discuss the debate over what the new Copyright Claims Board should look like, the enshrining of the presumption of irreparable harm for Lanham Act claims, new expungement and re-exam proceedings under the Trademark Modernization Act, and what all this means for companies and brands looking to adjust their strategies to enforce their IP (or defend themselves from plaintiffs now equipped with new arrows in their quivers).

MCLE Credit is pending.

For more information, please contact Meredith Coyne or Annie Schmaeling.

CLE Credits Available: Y

Practice:

  • Geistiges Eigentum
  • Trademark, Copyright & Media
  • Patents
  • Trade Secrets Litigation
  • U.S. International Trade Commission

Sheryl Koval Garko Partner

Boston

Over the course of her career, she has represented clients ranging from Fortune 50 companies to start-ups in trademark, copyright, false advertising, and trade secret litigations and at trial. She has worked with leading technology companies and some of the most recognizable brands in the world, including New Balance, Williams-Sonoma, Carnival, and Microsoft. She has tried cases to both judges and juries in federal courts across the United States and is experienced practicing before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and the International Trade Commission. Through her trial work, she has developed deep expertise in litigating novel and complex damages issues in IP cases and leveraging survey work. 

Sheryl most recently earned a complete victory at trial on behalf of client Carnival in a patent and breach of contract matter related to theft of Carnival intellectual property. Following an 8-day trial in the Southern District of Florida, the jury deliberated for three hours and returned a verdict in favor of Carnival on all counts, awarding $21 million in damages.

She honed her skills in high profile, precedent setting cases. Sheryl represented Aereo against the major U.S. television networks in defense of its novel, industry-disrupting system for providing internet access to over-the-air broadcast television. That case ultimately went to the Supreme Court, which addressed copyright law issues of first impression. Sheryl currently represents Microsoft litigating novel issues related to the intersection of generative AI, copyright, and trademark law.

Having prepared countless cases for trial, Sheryl has a clear understanding of the importance of identifying litigation strategy early on to direct the case in a cost- effective and efficient manner. Sheryl also leverages her wealth of experience to counsel clients on strategies to protect intellectual property when avoiding litigation is a strategic business priority.

Having also litigated a number of patent cases throughout her career, she brings to each matter a unique understanding of the intersection of copyright, trademark, trade secret and patent law. A superb communicator, she is able to explain diverse areas of complex technology to a judge or jury.

Sheryl has been consistently named as one of the leading intellectual property litigators in the world by World Trademark Review 1000, a peer and client survey. In its 2017 publication, WTR 1000 described her as “'highly recommended’ for her ‘helpful and creative advice,’ which is ‘always of first-rate quality.’” In the 2018 edition, WTR 1000 stated that Sheryl “offers significant firepower to any contentious mandate.” In the 2021 edition, WTR 1000 said Sheryl ”puts her heart and soul into driving favorable outcomes.” In 2022 Sheryl and her team were lauded for being “tried and tested” in litigation and “emerging victorious in many forums. And in 2023, they were praised for “steering [clients] through complex litigation,” with work that was quick, efficient and “with the highest level of integrity.”

Sheryl is the Global Chair of Orrick's Women's Initiative and is the Co-Chair of Orrick’s Intellectual Property Business Unit.

She was named a 2017 Woman Worth Watching by Profiles in Diversity Journal. Sheryl was also singled out for Metropolitan Corporate Counsel’s Women in Business and the Law 2017 edition. In 2015, Massachusetts Lawyers Weekly named her one of the Top Women of Law and she received a 2015 Leadership Excellence Award from the National Diversity Council.

Practice:

  • Cyber, Privacy & Data Innovation
  • Geistiges Eigentum
  • Trade Secrets Litigation
  • Strategic Advisory & Government Enforcement (SAGE)

Caroline Simons Partner

Boston; New York

Tech and consumer-facing clients – from early-stage startups to some of the most recognizable online companies – turn to Caroline to protect their IP, brand, and reputation in litigation. Her expertise includes the fast-evolving areas of Section 230 of the Communications Decency Act and online safety, cybersecurity & data privacy litigation. In the past year, she has litigated more than 60 cases related to platform immunity and she is currently lead counsel in dozens of cases for one of the world's largest tech companies on claims challenging myriad aspects of its online services, including content moderation and product design.

A partner to her clients in crisis management, Caroline also advises them in cyber incident response, government and internal investigations and enforcement actions. Her experience at the intersection of online safety, IP and white-collar litigation gives her breadth of perspective and allows her to work with her clients to problem-solve and effectively manage enterprise risk. Clients appreciate Caroline's ability to collaborate with witnesses, company stakeholders and factfinders – both inside and outside the courtroom – to achieve meaningful results.

Caroline maintains an active pro bono practice, representing clients in Hague proceedings as well as children and refugees in asylum proceedings in conjunction with the Political Asylum / Immigration Representation (PAIR) Project. She has drafted amicus briefs in cases pending before the U.S. Supreme Court and U.S. Circuit Courts of Appeals in the areas of technology, criminal justice, and reproductive rights.

Practice:

  • Trademark, Copyright & Media
  • Geistiges Eigentum

Robert M. O'Connell Jr. Of Counsel

Boston

His experience includes clearance, registration and protection of trademarks, trade dress and designs; opposition and cancellation proceedings in the TTAB; UDRP and other domain name proceedings; registration and protection of copyrights; negotiation and drafting of a variety of coexistence, licensing and other IP-related agreements; and providing IP support on various M&A and financing transactions, most recently including a groundbreaking series of securitization deals involving music and television rights involving household-name artists.

Businesses ranging from small start-ups to multi-billion-dollar corporations turn to Bob for help developing and implementing cost-effective domestic and global branding and trademark protection plans. They hail from the financial services, food & beverage, apparel, retail and pharmaceutical industries, among others.

Bob’s significant transactional experience includes a trademark and merchandise license agreement for a large resort casino in Las Vegas, and naming rights and sponsorship agreements for a major league sports stadium and a prominent performing arts center.

He also has extensive commercial litigation and dispute resolution experience in both intellectual property and other matters in state and federal trial and appellate courts, in inter partes and appellate matters before the Trademark Trial & Appeal Board, and in UDRP arbitration proceedings. Noteworthy reported cases include: Coach Services, Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600 (TTAB September 17, 2010) affirmed, 668 F.3d 1356 (Fed. Cir. 2012).

In the 2023 edition of World Trademark Review 1000, a listing of the world’s top trademark practitioners based on peer and client surveys, Bob received top-tier rankings for trademark prosecution and strategy with clients praising him for his “pragmatism, calmness, under pressure and fine-grained, detailed work product. Previously, WTR 1000 reported that Bob “wins effusive praise for his “pragmatic approach and unparalleled attention to detail.” “Simply stated, he is among the most cost-effective, business-oriented lawyers in any specialty.” “He is of incredible value – he matches anybody on expertise and exceeds most, if not all, on responsiveness and efficiency.” In prior years, WTR 1000 reviewers have said: “He never fails to address domestic and global branding issues quickly and comprehensively, causing one client to profess: ‘He is the only lawyer that I would use for trademark work in the Boston area.’” Bob has been characterized as a “distinguished” and “highly respected practitioner” with “a great reputation” in multinational mandates, who is “a trusted adviser in helping to build value in…brands” and “commands respect” particularly in the strategy and commercial field.” He has been listed in WTR 1000 each year since its inaugural edition in 2011, as well as WTR’s Global Leaders short-list since 2019.

Noteworthy past and present client engagements include:

  • A famous sports footwear and apparel brand with trademark enforcement and opposition matters;
  • The world’s largest retailer with trademark clearance matters across several business lines, as well as complex trademark prosecution and TTAB matters;
  • A “super-regional” bank with a portfolio of hundreds of federal and state trademarks and an active TTAB and UDRP enforcement program;
  • A global spirits company with hundreds of brands and an extensive enforcement docket;
  • A leading global private equity firm;
  • A national women’s apparel retail chain with stores across the United States and Canada; and
  • A branded pharmaceutical company with pioneering products for both human and veterinary medicine.