Gerald J. Ferguson

Partner

New York
T +1.212.589.4238
F +1.212.589.4201

Overview

Jerry Ferguson assists digital media and brick-and-mortar companies in developing, protecting and exploiting digital assets and intellectual property. With a strong grounding in privacy, intellectual property, advertising and consumer protection law, he offers integrated advice to clients that solves problems and helps his clients achieve their objectives. His diverse experience includes designing and implementing national and global privacy programs, vetting new digital products and services for legal compliance, managing responses to data security incidents, reducing risk in connection with the purchase or sale of digital assets, and developing intellectual property portfolios. His broad range of clients include online news and information services, digital media companies, luxury goods brands, financial institutions, digital marketers, and data analytics companies.

A founding partner of BakerHostetler's privacy and data protection practice, Jerry currently serves as the New York Office Coordinator of the BakerHostetler Digital Assets and Data Management group. He has authored numerous published articles, and frequently speaks before client and industry groups, such as the Mortgage Bankers Association, Advisen, ExecuSummit, the National Association of College and University Attorneys, the Practising Law Institute, the New York State Bar Association and the New Jersey Corporate Counsel Institute.

Select Experience

Privacy and Data Protection
  • Developed and executed privacy and data protection programs for clients in a wide variety of industries. Has advised on notification obligations under 50 state data breach notification laws, the European Union’s General Data Protection Regulation (GDPR), the California Consumer Privacy Act (CCPA), the Gramm-Leach-Bliley Act (GLB), Securities and Exchange Commission Regulation S-P (Reg. S-P), and Family Educational Rights and Privacy Act (FERPA).
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.
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.
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.
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Experience

Privacy and Data Protection
  • Developed and executed privacy and data protection programs for clients in a wide variety of industries. Has advised on notification obligations under 50 state data breach notification laws, the European Union’s General Data Protection Regulation (GDPR), the California Consumer Privacy Act (CCPA), the Gramm-Leach-Bliley Act (GLB), Securities and Exchange Commission Regulation S-P (Reg. S-P), and Family Educational Rights and Privacy Act (FERPA).
  • Managed data security incident response for more than 60 data security incidents, including incidents implicating the 50 state breach notification laws, the GDPR, GLBA, Financial Institutions Regulatory Authority (FINRA) rules and guidance, the Payment Card Industry Data Security Standard (PCI DSS) and the Health Insurance Portability and Accountability Act (HIPAA).
  • Managed the response to an incident where approximately six million payment card records were potentially exposed in a manner that minimized the costs and avoided reputational harm to the client.
  • 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).
  • 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.

Recognitions and Memberships

Recognitions

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

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

News

News

Press Releases

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
  • New Jersey, 1996

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
Due to the COVID-19 Pandemic, HHS Eases Restrictions on the Use and Disclosure of PHI by Business Associates
By Eric A. Packel
April 3, 2020
The COVID-19 public health emergency already has caused the U.S. Health and Human Services (HHS) Office for Civil Rights to announce various enforcement changes and waivers. On April 2, HHS issued another notification of enforcement...
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Data Privacy Monitor
CARES Act Significantly Revises Part 2 Rules to Better Align with HIPAA
By Vimala Devassy, Kyle R. Gregory
April 2, 2020
On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security Act (the “CARES Act”) into law. While the focus of the CARES Act has been on direct financial aid to Americans, the Act also contains a number of...
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Data Privacy Monitor
Healthcare Providers Remain Targets for Ransomware Attacks in the Midst of COVID-19 Pandemic
By Sara M. Goldstein, Benjamin D. Wanger
April 1, 2020
Although it was widely reported that several ransomware threat actor groups have pledged to not target healthcare providers until the COVID-19 pandemic is over, BakerHostetler’s Digital Assets and Data Management Practice Group and...
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Data Privacy Monitor
Additional 6-Month CCPA Extension Sought in Wake of COVID-19
By Taylor A. Bloom, Gerald J. Ferguson, Alan L. Friel
March 18, 2020
Today we filed a request to the California Attorney General, as part of the CCPA rulemaking process, seeking an additional six month delay in the enforcement of the CCPA to allow our clients time to better focus on business continuity and...
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Data Privacy Monitor
IAB Previews Solution for Interest-Based Advertising and CCPA ‘Do Not Sell' Right
By Kyle R. Fath, Gerald J. Ferguson, Alan L. Friel, Linda A. Goldstein
September 19, 2019
On September 17, 2019, numerous stakeholders in the digital advertising industry – including publishers, advertisers/brands, AdTech companies and law firms (including numerous representatives from BakerHostetler) – convened at the...
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