Gerald J. Ferguson

Experience

Privacy and Data Protection

• Developed and executed privacy and data protection programs for banks, insurers, retailers, educational institutions and professional services companies. Has advised on notification obligations under 47 state data breach notification laws and the Gramm-Leach-Bliley Act (GLB), Securities and Exchange Commission Reg. S-P, Health Insurance Portability and Accountability Act (HIPAA), Health Information Technology for Economic and Clinical Health Act (HITECH), and Family Educational Rights and Privacy Act. 
• Managed a breach response team when more than six million payment card records were potentially exposed. Directed company compliance with state notification laws, payment card industry rules, GLB and contractual obligations arising under thousands of contracts with banks, merchants and other processors. Was able to minimize the costs and avoid extensive reputational harm to the client company.
• Directed forensics and coordinated with law enforcement personnel when a prominent government contractor suffered an intrusion by a foreign government team of hackers seeking trade secrets (aka an advanced persistent threat). Directed compliance with state notification laws, HIPAA and HITECH, and reporting obligations arising under government contracts, and reported to the company's directors and major stakeholders.
• As a member of the Mortgage Bankers Association's board of directors' Technical Advisory Committee, was the principal author of a white paper setting out best practices for data security programs. Has assisted numerous clients in developing information security programs that meet ISO standards, industry standards and the developing National Institute of Standards and Technology information security framework.

Intellectual Property

• Through the Trademark Trial and Appeals Board (TTAB) and federal court proceedings culminating in a jury trial, 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.
• Established a program for the protection of a family of popular prepaid calling card trademarks. 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.
• 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, obtained the recovery of $9.65 million on behalf of a Brazilian licensee when a Japanese licensor initially denied any payment was due.
• 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, established a nationwide trademark protection program involving integrated federal anticounterfeiting and infringement actions, customs enforcement, and cooperation with local law enforcement agencies.

Regulatory Compliance

• Represented a prepaid services card company in an informal discussion with the Federal Trade Commission (FTC) and nine attorneys general regarding industrywide practices relating to the disclosure of fees and expiration dates and compliance with gift card laws and regulations. The industrywide reform efforts that were promoted as a result substantially benefited the client by removing unfair competition.
• In an action involving admitted violations of the Children's Online Privacy Protection Rule brought by the FTC against a client – an owner and operator of websites popular with children – negotiated a substantially reduced fine and penalties for the client. Demonstrated that the violations were inadvertent and did not cause actual harm to minors using the websites.
• 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 Act and the Communications Decency Act, and to avoid liability under federal antispam laws and state antispam laws, including California's antispam law.
• 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, advised an advertising agency in connection with the purchase of a business based on generating positive comments from social media.
• 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 online rights.
• On behalf of a major licensing agency, conducted a global review of all licensing, agency, representation and syndication agreements. All agreements were updated to reflect developments in the law and to conform to licensing industry best practices.
• 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. 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
  • Advisory Group on Data Privacy and GDPR
  • International Section: Chair (March 2015 to March 2016)
  • International Section: Chair-Elect (March 2014 to March 2015)
  • Intellectual Property Committee: Co-Chairman (March 2013 to March 2014)
• Martindale-Hubbell: AV Preeminent