Gerald J. Ferguson

Partner

New York
T 212.589.4238  |  F 212.589.4201

Jerry Ferguson assists clients in developing, protecting, and exploiting intellectual property, data, and media assets. His diverse experience includes designing privacy and data protection programs, managing legal compliance programs for online business operations, responding to data security breaches, and developing intellectual property portfolios. His clients include online media companies, luxury goods brands, financial institutions, email and text marketers, and data analytics companies. Jerry brings his clients the benefit of his multi-disciplinary perspective as he assists them in solving problems, creating opportunities and achieving their objectives.

Jerry serves as New York office Coordinator for the Intellectual Property group. A founding partner of BakerHostetler's Privacy and Data Protection Team, 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 privacy and data protection programs for banks, insurers, retailers, educational institutions, and professional services companies. He has advised on notification obligations under 47 state data breach notification laws, Gramm-Leach-Bliley, Reg S-P HIPAA/HITECH, and FERPA. 
Intellectual Property
  • 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, and built the framework for a successful global licensing program.
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 privacy and data protection programs for banks, insurers, retailers, educational institutions, and professional services companies. He has advised on notification obligations under 47 state data breach notification laws, Gramm-Leach-Bliley, Reg S-P HIPAA/HITECH, and FERPA. 
  • 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 potentially 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.
Intellectual Property
  • 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 worldwide licensing program in the face of persistent opposition from a prominent fashion designer, and built the framework for a successful global licensing program.
  • 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.

Recognitions

  • The Best Lawyers in America© (2016)
    • New York: Privacy and Data Security Law

Memberships

  • New York State Bar Association: International Section
      • Intellectual Property Committee: Co-Chairman (March 2013 to March 2014)
      • International Section: Chair-Elect (March 2014 to March 2015)
      • International Section: Chair (March 2015 to March 2016)
  • 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
Safe Harbor Part Deux: The Privacy Shield
February 3, 2016
This week began like many. An arbitrary deadline came and went – this one, January 31, 2016, was set by the Article 29 Working Party for European and United States regulators to address the void created by the invalidation of the Safe...
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Data Privacy Monitor
Legal Developments in Connected Car Arena Provide Glimpse of Privacy and Data Security Regulation in Internet of Things
February 2, 2016
With the holiday season in the rear view, automobiles equipped with the newest technology connecting carmakers with their vehicles, vehicles with the world around them, and drivers with the consumer marketplace – Connected Cars – have...
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Data Privacy Monitor
Encryption: The Battle Between Privacy and Counterterrorism
January 28, 2016
For privacy advocates, it is universally accepted that encryption is a very good thing. After all, encrypted data is deemed a safe harbor under HIPAA and state breach-notification laws, providing an “out” from potential fines and penalties...
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Data Privacy Monitor
Data Security in the Financial Industry: Five Key Developments to Keep An Eye on in 2016
By Jenna N. Felz
January 27, 2016
According to a 2015 report on threats to the financial services sector, 41% of financial services organizations polled had experienced a data breach or failed a compliance audit in the previous year, and 57% listed preventing a data breach...
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Data Privacy Monitor
Five Questions Clients Asked Most Often in 2015 About Incident Response
January 20, 2016
We provided incident response and incident response preparedness services to hundreds of companies in 2015. The questions we answered were as unique and varied as the incidents companies faced. Some were challenging, and occasionally they...
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