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, Technology and Media group. A founding partner of BakerHostetler's Privacy and Data Breach 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.

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
A Kinder, Gentler Spanish Data Protection Authority?
July 28, 2015
As of July 24, Spain has a new director for its Data Protection Authority (Agencia Española de Protección de Datos — AEPD). The AEPD is the agency responsible for conducting investigations and bringing disciplinary actions concerning data...
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Data Privacy Monitor
State Law Roundup: Legislatures Across the U.S. Revamp Data Breach Notification Laws
By Jenna N. Felz
July 27, 2015
As the number of highly publicized data breaches continues to skyrocket and proposals for a federal data breach notification law stagnate, state legislatures around the country have been busy amending their own breach notification...
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Data Privacy Monitor
Lloyd’s Report Highlights Risk of Cyberattacks on National Power Grid
July 23, 2015
A sophisticated cyberattack on the U.S. power grid could cause nearly $250 billion in economic losses and, under the most severe circumstances, cost more than $1 trillion to the U.S. economy, according to a recent report prepared by...
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Data Privacy Monitor
FCC’s New TCPA Order May Require Companies to Obtain Updated Consents for Marketing Calls and Texts
July 22, 2015
Last week we published an overview of key issues raised by the Federal Communications Commission’s July 10, 2015, Declaratory Ruling and Order regarding the Telephone Consumer Protection Act (the “July 2015 Order”). The July 2015 Order...
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Data Privacy Monitor
“Don’t Call Us, We’ll Call You.” The FCC’s Latest TCPA Ruling Imposes Even More Restrictions on Telemarketing Calls and Texts
July 15, 2015
On July 10, 2015, the Federal Communications Commission released the Omnibus Declaratory Ruling and Order (the Order) it adopted on June 18. The Order addresses requests for clarification regarding requirements under the Telephone Consumer...
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