Gerald J. Ferguson

Partner

New York
T 212.589.4238  |  F 212.589.4201

Pursuing his clients' interests has given Jerry Ferguson extensive experience protecting and exploiting intellectual property, technology, and new media assets. His diverse experience includes designing privacy and data protection compliance programs, responding to data security breaches, developing intellectual property portfolios, negotiating transactions, and successfully trying cases. His clients include banks, insurers, global retailers, luxury goods companies, web-based marketers and data analytics companies. Engaging deeply with his clients, Jerry brings the benefit of his multi-disciplinary perspective to every issue he faces as he assists client in solving problems, creating opportunities and achieving their objectives.

Jerry serves as Co-Leader of BakerHostetler's national Privacy and Data Protection team and the New York office Coordinator for the Intellectual Property, Technology and Media group. He is a regular contributor to BakerHostetler's Data Privacy Monitor blog and has authored numerous published articles. Jerry frequently speaks before client and industry groups, such as the Mortgage Bankers Association, the Advisen, ExecuSummit, the National Association of College and University Attorneys, Practising Law Institute, and the New York State Bar Association.

Select Experience

Privacy and Data Protection
  • Jerry developed and executed a breach notification program for banks, insurers, retailers, educational institutions, professional services companies, and others involving notification obligations under 46 state data breach notification laws, Gramm-Leach-Bliley, HIPAA/HITECH, and FERPA. Through careful management of forensics and other investigations, Jerry identified the notification obligations and minimized the long-term costs and reputational harm that could potentially face his clients.
Litigation and Administrative Actions
  • Through Trademark Trial and Appeals Board (TTAB) and federal court proceedings culminating in a jury trial, Jerry established the right of a sporting association to create a successful worldwide licensing program in the face of persistent opposition from a prominent fashion designer.
Regulatory Compliance
  • Jerry represented a pre-paid services card company in an informal discussion with the FTC and nine attorneys general regarding industry-wide practices relating to the disclosure of fees and expiration dates and compliance with gift card laws and regulations. The industry-wide reform efforts that were promoted as a result substantially benefitted the client by removing unfair competition.
Transactional Experience
  • As Intellectual Property, Privacy, and Digital Media counsel in mergers, stock purchases and asset acquisitions, Jerry advised an advertising agency in connection with the purchase of a business based on generating positive comments from social media.
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Experience

Privacy and Data Protection
  • Jerry developed and executed a breach notification program for banks, insurers, retailers, educational institutions, professional services companies, and others involving notification obligations under 46 state data breach notification laws, Gramm-Leach-Bliley, HIPAA/HITECH, and FERPA. Through careful management of forensics and other investigations, Jerry identified the notification obligations and minimized the long-term costs and reputational harm that could potentially face his clients.
  • A sophisticated hack into the systems of a payment card processor required Jerry to manage a breach response team when more than six million payment card records were exposed. Jerry directed company compliance with state notification laws, Payment Card Industry rules (PCI), GLB, and contractual obligations arising under thousands of contracts with banks, merchants, and other processors. He was able to minimize the costs and avoid extensive reputational harm to the company.
  • Jerry directed forensics and coordinated with law enforcement when a prominent government contractor suffered an intrusion from a foreign government team of hackers seeking trade secrets (aka the Advanced Persistent Threat). He directed compliance with state notification laws, HIPAA/HITECH, reporting obligations arising under government contracts and reported to the company’s directors and major stakeholders.
  • As a member of the Mortgage Bankers Association, Board of Directors Technical Advisory Committee, Jerry was the principle author of a White Paper setting for best practices for data security programs. He has assisted numerous clients in developing information security programs that meet ISO standards, industry standards and the developing NIST information Security Framework.
Litigation and Administrative Actions
  • Through Trademark Trial and Appeals Board (TTAB) and federal court proceedings culminating in a jury trial, Jerry established the right of a sporting association to create a successful worldwide licensing program in the face of persistent opposition from a prominent fashion designer.
  • Jerry established a program for the protection of a family of popular pre-paid calling card trademarks. He commenced the preliminary injunction proceedings in New York, Florida, Texas, Colorado, and California, and removed all significant infringements from the marketplace, allowing recoveries to be paid for the cost of the program.
  • Jerry protected the rights of a cable television station in the name of one of its most popular programs in a proceeding before the TTAB.
  • In an ICC arbitration involving termination of a copyright and trademark license and distribution agreement, Jerry obtained the recovery of $9.65 million on behalf of a Brazilian licensee when a Japanese licensor initially denied any payment was due.
  • Jerry obtained termination of a trademark license granted by a U.S. trademark owner to a Mexican licensee during a proceeding before the American Arbitration Association.
  • On behalf of a luxury goods company, Jerry established a nationwide trademark protection program involving integrated federal anti-counterfeiting and infringement actions, customs enforcement, and cooperation with local law enforcement.
Regulatory Compliance
  • Jerry represented a pre-paid services card company in an informal discussion with the FTC and nine attorneys general regarding industry-wide practices relating to the disclosure of fees and expiration dates and compliance with gift card laws and regulations. The industry-wide reform efforts that were promoted as a result substantially benefitted the client by removing unfair competition.
  • In an action brought by the FTC involving admitted violations of the Childrens’ On-Line Privacy Protection Act against Jerry's client, an owner and operator of websites popular with children, Jerry negotiated a substantially reduced fine and penalties for the client. He demonstrated that the violations were inadvertent and did not cause actual harm to minors using the websites.
  • Jerry established processes and procedures for hundreds of web-based business operations—including a 20-million-plus member social networking community, and a pioneering crowdsourcing solutions website—to obtain protection from liability under the Digital Millennium Copyright (DMCA) and the Communications Decency Acts (CDA), and to avoid liability under federal anti-spam laws (CAN-SPAM) and state anti-spam law, including California's anti-spam law.
  • Jerry assisted with numerous social media promotions in compliance with applicable law and industry regulations, including sweepstakes law, gift card law, and FTC product endorsement regulations.
Transactional Experience
  • As Intellectual Property, Privacy, and Digital Media counsel in mergers, stock purchases, and asset acquisitions, Jerry advised an advertising agency in connection with the purchase of a business based on generating positive comments from social media.
  • Jerry has advised a cable television network in connection with the purchase of a website based on blogs in the home design industry, as well as a sporting association in connection with the purchase of a media company including print and on-line rights.
  • On behalf of a major licensing agency, Jerry conducted a global review of all licensing, agency, representation, and syndication agreements. All agreements were updated to reflect the developments in the law and to conform to licensing industry best practices.
  • Jerry counseled a trademark owner in developing a domestic and global licensing program that initially generated a little more than $100,000 in retail sales and now generates more than $1 billion in retail sales globally. Jerry assisted with the registration and protection of the international trademark portfolio, developed the standard licensing and agency forms, participated in major contract negotiations and assisted with the development of product approval procedures.

Memberships

  • New York State Bar Association: International Section
      • Intellectual Property Committee
        • Co-Chairman (March 2015 to March 2016)
        • Chair-Elect (March 2014 to March 2015)
  • Martindale-Hubbell: AV Preeminent

News

Press Releases

Services

Industries

Admissions

  • U.S. Court of Appeals, Second Circuit, 1996
  • U.S. District Court, District of New Jersey, 1996
  • U.S. District Court, Northern District of New York, 1995
  • U.S. District Court, Western District of New York, 1994
  • U.S. District Court, Eastern District of New York, 1990
  • U.S. District Court, Southern District of New York, 1989
  • New York, 1989

Education

  • J.D., University of Virginia School of Law, 1988
  • B.A., University of Virginia, 1984

Blog

In The Blogs

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Data Privacy Monitor
Iowa Breach Notification Law Now Requires AG Notification, Applies to Paper Records
April 16, 2014
Iowa recently joined an increasing number of states that require notification of state regulatory authorities following a breach, as well as a handful of states in which paper records can trigger notification obligations.  On April 3...
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Data Privacy Monitor
With OpenSSL Compromised by Heartbleed, an Opportunity for Companies to Diversify Cyber Security Efforts
April 14, 2014
The recent discovery of the “Heartbleed” online bug has sent shockwaves through the internet, causing companies and individuals alike to question very basic assumptions about cyber security. The bug has allegedly existed for the past two...
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Data Privacy Monitor
Kentucky Enacts Data Breach Notification Statute
April 14, 2014
On April 10, 2014, Kentucky Governor Steve Beshear signed H.B. 232 into law, making Kentucky the 47th state to enact data breach notification legislation.  Prior to H.B. 232, Kentucky was one of only four states—including Alabama, New...
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Data Privacy Monitor
Privacy Law in a Nutshell
April 11, 2014
BakerHostetler Privacy & Data Security partner Erica Gann Kitaev is a co-author of the recently published Privacy Law in a Nutshell, Second Edition, through West Academic Publishing. Legal issues related to privacy are exploding in the...
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Data Privacy Monitor
Ill Conceived California Privacy Bill Threatens Viability Of Commercial Educational Online Services
April 11, 2014
SB 1177, the Student Online Privacy Protection Act was recently introduced in the California legislature.  This is a bad bill for the private educational industry, and ultimately for parents and students.  It would drastically expand the...
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