Barry Benjamin focuses his practice on advertising, intellectual property, technology, and media law in the areas of litigation, advice and counseling, and regulatory defense. He has represented major corporate advertisers, start-up ventures, and small and medium-size agencies and companies. As an experienced litigator, Mr. Benjamin handles false advertising and trademark claims under the Lanham Act, trade dress violations, copyright claims, misappropriation, and fraud claims. Outside of the litigation context, Mr. Benjamin advises and counsels clients in the areas of advertising, technology, and media. Mr. Benjamin's understanding and breadth of knowledge of the broad areas under the umbrella of "advertising law," including trademarks, copyright, the First Amendment, the rights of privacy and publicity, fair use, marketing and trade practices, licensing, and consumer privacy and data security, informs his ability to provide reasoned, experienced judgment and legal/risk analysis to his clients. Mr. Benjamin drafts and negotiates contracts ranging from traditional agency-client, co-promotion, talent, endorsement and sponsorship agreements to Internet advertising, content licensing, and copyright and trademark licensing deals. He advises on the structure of and reviews advertising and marketing campaigns, and drafts terms and conditions for all forms of advertising and promotion initiatives, including sweepstakes, contests, social networking, user-generated content, direct mail marketing, telemarketing, and charitable marketing programs. He also assists clients in developing and maintaining their intellectual property portfolios (including copyright and trademark registration); in trademark prosecution; in the availability, use, registration, and enforcement of trademarks; and in opposition and cancelation proceedings in the U.S. Patent and Trademark Office. His practice includes privacy and technology-related areas such as advising on and assisting in the development of behavioral targeting and advertising policies, privacy policies, website terms of use, data collection, data security, and breach notification policies. He also drafts and negotiates technology contracts such as web site content and development agreements, affiliate agreements, and software licensing deals. Mr. Benjamin also has extensive experience representing advertisers and marketers in regulatory investigations before government agencies, in competitor challenges through the self-regulatory process, and in dealing with consumer complaints and class actions. Mr. Benjamin was recognized as a New York "Super Lawyer" in the area of First Amendment/Media /Advertising Law by SuperLawyers magazine in 2009 and 2011 and was listed in The Best Lawyers in America® for Advertising Law in 2011 and 2012. Professional & Community Activities New York City Bar Association, Information Technology Committee New York City Bar Association, Consumer Affairs Committee, Former Member Promotion Marketing Association, Government and Legal Affairs Committee Industries Advertising & Publishing; Fashion & Luxury Goods; Consumer Products & Retail; Entertainment, Media & Sports; Food, Beverage & Agriculture; Hospitality & Gaming; Advertising & Publishing; Fashion & Luxury Goods; Consumer Products & Retail; Entertainment, Media & Sports; Food, Beverage & Agriculture; Hospitality & Gaming; Technology & Software; Telecommunications Experience Advertising agreement for advertising agency *, Represented advertising agency in negotiations with international mobile phone carrier. Trademark litigation for Internet auction website *, Represented Internet auction website in defense of claims for fraudulent sales of branded merchandise by brand advertisers. Promotional contract negotiations for JA Apparel Corp., Drafted the "Welcome Home Joe" licensing and promotional contract among our client JA Apparel Corp. and with Iraq and Afghanistan Veterans of America (IAVA), and JCPenney. This promotion provides Iraq and Afghanistan veterans with $1 million in certificates to purchase professional attire as they transition to the civilian workforce. Representation of JA Apparel Corp. in this contract also included providing clearing advertising copy, negotiating terms and conditions for the promotion, and advising on trademark clearance issues. Copyright infringement for Gerson & Gerson Inc. *, Successfully represented Gerson & Gerson, Inc., a children's clothing designer, in a copyright infringement case relating to the defendant making knockoffs of its toddler dress designs. The firm negotiated a favorable monetary settlement for the client and obtained a final judgment on consent with permanent injunction. NASCAR sponsorship negotiation for drug manufacturer *, Represented over the counter drug manufacturer in negotiation of NASCAR sponsorship agreement. Raffles and casino night compliance with state regulations *, Advised medical device manufacturer on state regulations around corporate fund raising efforts, including raffles and a casino night. Copyright infringement and theft of trade secrets for corporate education and training company *, Represented corporate education and training company asserting theft of trade secrets and copyright infringement claims for copying website against former employee. Event marketing promotion advice for client *, Advised agency on appropriate processes and procedures for event marketing promotion. Right of Publicity/Copyright/Parody advice for Source Marketing Group *, Advised Source Marketing Group on intellectual property issues related to proposed advertising campaign using parodies of current and old movie and television show titles and actors' names. Copyright infringement defense for media publisher *, Represented media publisher defending claims of copyright infringement and hot news misappropriation. Advertising claims against Suncore Products LLC, Successfully represented Suncore Products LLC ("Suncore") against an investigation by the National Advertising Division of the Council of Better Business Bureau ("NAD") seeking substantiation for Suncore's explicit nutritional content claims for its WhoNu? Cookies and inquiring whether Suncore's advertising included an unsubstantiated implied overall equivalency claim concerning the benchmark foods used to illustrate the nutritional content of WhoNu? Cookies. The NAD issued a ten-page decision finding that Suncore's advertising was, without qualification, fully substantiated and did not contain any unsubstantiated implied claims. Generated content contest aligned with Super Bowl for well-known job search and career management Internet site *, Advised well-known job search and career management Internet site on all sweepstakes, contest, and copyright/user generated content law aspects of "Department of Fandemonium" Super Bowl advertising campaign. Right of publicity litigation for footwear maker *, Represented footwear maker in defense of right of privacy/publicity claims by models whose images were used on packaging. Negotiation of on-air talent clothing outfitting for apparel designer *, Represented men's apparel designer in negotiation of Olympics on-air talent clothing outfitting agreement. Compliance work for international apparel brand owner *, Represented international apparel brand owner in charitable commercial co-venture, coordinating compliance with state law registration and filing obligations. Acquisition of ownership interest in social media website for individual *, Represented individual shareholder's withdrawal and buy out of ownership interest in Internet social media website. Unfair and deceptive trade practice defense for Internet marketer *, Defended Internet marketer and Web hosting company from fraudulent advertising practices and unfair and deceptive trade practice allegations by state attorney general. Litigation for international franchise fitness center, Represented an international fitness center against false advertising allegations that a television commercial wrongfully utilized the trademarks of competitor. Privacy and personal data transfer issues for international cruise line *, Advised international cruise line on privacy and cross-border consumer personal data transfer issues. Compliance with state gambling laws for network broadcaster *, Advised television network broadcaster on state gambling laws in connection with proposed televised charity poker tournament. Privacy issues related to internet social media providers *, Represented in an advisory capacity an Internet network advertising agency specializing in social media, specifically advised company on privacy issues including their privacy policy. Advisory counsel for national retail food company *, Advised national quick service retail food company on engaging in user generated content and social media marketing efforts. Defended treated wood manufacturer against false advertising claims, Represented treated wood product manufacturer against false advertising claims by a competitor based on allegations of superiority, passing off, and false qualifications for meeting standards set by model code. Negotiation of software license for national real estate property owner *, Advised national real estate property owner and manager on negotiating software license for residential property management. Development of e-mail marketing policy for corporate printing company *, Represented corporate printing company in development of e-mail marketing policy and Can-Spam compliance. False advertising litigation for vitamin manufacturer, Represented a nutritional supplement and pre-natal vitamin manufacturer against a manufacturer of generic supplements of false advertising and related claims, based on use by defendant of client's patented and trademarked compound on labels and marketing materials. Case pending. State gambling law compliance for web site operator *, Represented web site operator in advisory capacity regarding compliance with state lottery and gambling laws concerning internet sales of lottery and gambling devices. Compliance with state telemarketing laws *, Advised financial institution on compliance with 50 state telemarketing laws. Litigation for home improvement & hardware retail company, Represented an international specialty tool manufacturer of false advertising and related claims against former blade supplier and new purchaser of blade supplier's products, based on former blade supplier's falsely taking credit for awards and honors earned by client's products. Case pending. *Experience gained by attorney prior to joining Kilpatrick Townsend Publications 19 October 2011, Advertising and Social Media: What You Need To Know, Podcasts 05 May 2011, California District Court Dismisses Putative "Flash Cookie" Class Action for Lack of Standing, Lack of Actual Damage, Legal Alerts 07 April 2011, Intellectual Property Innovations Class: The FTC's Revised Green Guides for Environmental Marketing: Drastic Changes or Rational Revisions?, Podcasts 10 February 2011, The Latest Litigation Front: Behavioral Advertising
Source: Law 360, Articles 01 January 2011, Advertising and the Environment: The New FTC Green Guides
Source: New York State Bar Association IP Section Bright Ideas, Articles 20 December 2010, Settlement reached in Flash Cookie class action defendants agree to push for self-regulatory, Legal Alerts 07 December 2010, Facebook Updates Promotion Guidelines, Legal Alerts 24 November 2010, Use of "Made with Renewable Materials" and "Made with Renewable Energy" claims in Advertising under the FTC's Proposed Revised Green Guides, Legal Alerts 18 November 2010, Flash Cookies: Marketing Tactic Raises Privacy Concerns, Legal Alerts 15 November 2010, Use in Advertising of Certifications and Seals of Approval Under the FTC's Proposed Revised Green Guides, Legal Alerts 11 November 2010, Using "Organic" In Advertising: FTC Declines to Issue Guidance in Proposed Green Guides Revisions, Defers to U.S. Dept. of Agriculture, Legal Alerts 11 November 2010, "Recycled Content" Claims under the FTC's Proposed Revised Green Guides, Legal Alerts 04 November 2010, FTC's Proposed Revised Green Guides Provide New Guidance on "Free-of" and "Non-toxic" Claims, Legal Alerts 02 November 2010, Degradable Claims Under FTC's Proposed Revised Green Guides, Legal Alerts 12 October 2010, FTC's Proposed Revised Green Guides Warn Against General "Green" Claims, Legal Alerts 01 September 2010, Social Media Game Plan: IP and Marketing Law Playbook
Source: Association of Corporate Counsel Docket, Articles 02 June 2010, 'Not On My Watch' -- De Niro and Pacino Settle Right of Publicity and False Advertising Claims Against Watch Maker and Film Distributor
Source: Entertainment Law Review, Articles 28 May 2010, Comprehensive Draft Federal Privacy Bill Released For Discussion - What You Need To Know Now, Legal Alerts 11 March 2010, Becoming Social: Issues in Creating Networking Sites
Source: New York Law Journal, Articles 14 January 2010, Marketing to Kids In the Online Age
Source: New York Law Journal, Articles 06 January 2010, Employee's Online Endorsements Can Result in Employer Liability, Legal Alerts 16 December 2009, De Niro, Pacino, Settle Right of Publicity Case, Legal Alerts 07 October 2009, FTC Adopts Amended Guides Governing Endorsements and Testimonials, Legal Alerts 17 July 2009, IP Innovations Class: Is Your News 'Hot': The Hot News Exception, Copyright Law, and Protecting Content in the Digital Age, Podcasts 18 June 2008, Protecting Against Pranksters When Running User-Generated Contests
Source: Online Media Daily, Articles 02 June 2007, A Blurry Distinction: Commercial vs. Non-Commercial Speech
Source: The Connecticut Law Tribune, Articles 20 April 2007, Colliding Worlds in Copyright
Source: Mediaweek, Articles 01 January 2007, Email Marketing and CAN-SPAM: Practical Consideration
Source: Subscription Marketing, Articles 19 December 2006, Better Discloser-How to Make Product Integration More Transparent for Viewers
Source: Mediaweek, Articles 16 November 2006, Case Study of the Issues Facing Entertainment, Media and Advertising Industries in Setting Up Promotional Blogs
Source: Law Seminars International Blog Law Conference: Legal issues, Liabilities and New Opportunities, Articles 01 September 2006, Information Security - More than Just Consumer Notification, and Already Here
Source: The Metropolitan Corporate Counsel, Articles 21 August 2006, A Consumer's "Opt-In" Must Be Clear, Legal Alerts 05 July 2006, FCC's New Junk Fax Regulations, Legal Alerts 01 March 2006, Privacy Officers Should Review Effect of Google's New Search Across Computer Tool Before Permitting Use by Employees, Legal Alerts 01 January 2006, A Fine Line Between Placement and Payola
Source: BRANDWEEK, Articles 28 November 2005, Florida Drops Full Rules in Print Advertising Requirement for Sweepstakes Ads, Legal Alerts 15 August 2005, Advertising Disclaimers: Disclaimers in Small Print Must Be Clear and Conspicuous
Source: New Jersey Lawyer, Articles 22 July 2005, Ohio AG Lawsuite Highlights Need to Notify Consumers About Theft of Personal Data, Legal Alerts 01 July 2005, Update to Fax Marketers: Congress Creates, Legal Alerts 01 July 2004, Regulatory Enforcement Actions Serve as Warnings
Source: Subscription Marketing, Articles 01 December 2003, Marketing to Children
Source: Metropolitan Corporate Counsel, Articles 01 November 2003, Plan Ahead to Limit Potential Disasters
Source: Marketing News, Articles , Social Media, Emerging Issues News 05 February 2012, Kilpatrick Townsend's Barry Benjamin Interviewed by The Daily: Super Sneaky: Clever Companies Go Rogue to Ride the Coattails of 'Big Game' Sponsors, In the News 30 September 2011, Kilpatrick Townsend Attorneys Named 2011 New York Super Lawyers, News Releases 06 September 2011, Kilpatrick Townsend Earns Record-Breaking Recognition in Annual Best Lawyers in America 2012, News Releases 11 July 2011, Kilpatrick Townsend's New York Office Again Earns High Recognition from Chambers USA 2011, 2011 Legal 500 US and WTR 1000, News Releases 10 June 2011, Kilpatrick Townsend Partner Barry Benjamin: Featured Participant at ACI's 2nd Annual Forum on Litigating and Resolving Advertising Disputes, News Releases 09 March 2011, Kilpatrick Townsend's Barry Benjamin to Serve as Moderator at Prominent Privacy Law Symposium, News Releases 04 February 2011, Kilpatrick Townsend Partner Barry Benjamin: Featured Speaker at New York City Bar Center Conference, News Releases 14 January 2011, Kilpatrick Townsend Partner Barry Benjamin: Featured Speaker at ACI's National Advance Forum on Advertising, News Releases 09 November 2010, Kilpatrick Stockton's Barry Benjamin and Ty Lord to Participate in 32nd Promotion Marketing Association Law Conference, News Releases 28 September 2010, Kilpatrick Stockton Attorneys Named 2010 New York Super Lawyers, News Releases 12 August 2010, Kilpatrick Stockton Earns Record-Breaking Recognition in Annual Best Lawyers in America 2011, News Releases 21 June 2010, Kilpatrick Stockton's New York Office Again Earns High Recognition from Chambers USA 2010 and 2010 Legal 500 US, News Releases 15 June 2010, Kilpatrick Stockton Partner Barry Benjamin to Moderate Distinguished Panel on Hot Topics in Online Behavioral Advertising, News Releases 15 June 2010, Kilpatrick Stockton Recognized by Prestigious 2010 Legal 500 US, News Releases 17 December 2009, Kilpatrick Stockton Partner Barry Benjamin to be Featured Speaker at National Forum on Advertising Law, News Releases 24 October 2009, Kilpatrick Stockton's Barry Benjamin and Ty Lord Participate in 31st Promotion Marketing Association Law Conference, News Releases 08 October 2009, Kilpatrick Stockton Attorneys Named 2009 New York Super Lawyers, News Releases 25 September 2009, Kilpatrick Stockton's Barry Benjamin Serves as Co-Chair of 31st Promotion Marketing Association Law Conference, News Releases 11 May 2009, Kilpatrick Stockton Continues Expansion of Leading Intellectual Property Department in New York, News Releases Events 12 January 2012, Challenging Competitors' Comparative Advertising, Events 15 November 2011, 33rd Annual PMA Marketing Law Conference, Events 25 March 2011, Fifth Annual Law & Information Society Symposium, Events 11 February 2011, Sweepstakes, Promotions & Marketing Laws: Comprehension & Compliance, Events 24 January 2011, Developing Clear Policies for Compliant Use of Mobile Marketing, Events 11 January 2011, Challenging Competitors Comparative Advertising, Events 18 November 2010, Anatomy of the 2010 Integrated Marketing Ad Agency Agreement: A Play for Advanced Studies with Three Main Characters, Events 27 September 2010, Online Behavioral Advertising, Events 21 June 2010, New York City Bar Association Presentation: Hot Topics in Online Behavioral Advertising, Events 05 November 2009, Immediate Engagement: the New New Things, Events 16 July 2009, IP Innovations Class: Is Your News 'Hot': The Hot News Exception, Copyright Law, and Protecting Content in the Digital Age (Speaker), Events 09 February 2009, Virtual Worlds Social Networks User Generated Content, Events 30 January 2009, Information Security and Data Privacy Law, Events 12 December 2008, Understanding and Complying with Sweepstakes and Promotions Drafting Official Rules and Preparing for the Worst, Events 20 November 2008, The Message Is the Medium: Consumer Marketing in the Age of Ubiguity, Events 07 November 2008, Marketing and Advertising Law Update, Events 20 October 2008, Sweepstakes Contents Promotions Marketing to Children, Events 11 September 2008, Current Issues in Trademark and Copyright Licensing Transactions, Events 17 June 2008, Regulatory Summit for Advertisers and Marketers, Events 01 April 2008, Regulatory Kid Watch Ensuring Privacy and Safety When Manufacturing and Marketing Products, Events 15 November 2007, Negotiating Promotion Contracts Key Issues in Negotiating Promotion Contracts, Events 10 October 2007, Sweepstakes Contests and Promotions, Events 22 June 2007, Our Trademark Copyright and ECommerce Related Licensing Transactions, Events 16 November 2006, Case Study of the Issues Facing Entertainment, Media and Advertising Industries In Setting Up Promotional Blogs, Events 12 October 2006, The Intellectual Property Think Tank: A Case Study About Good Ideas and Their Consequences, Events 27 September 2006, Hot Topics In Advertising and Marketing Law 2006: The Law of Sweepstakes and Contests, Events 04 May 2006, Consumer Promotion Law Essentials You Need to Know, Events 26 January 2006, Direct Marketing Laws, Events 02 December 2005, Hyperchange Maintaining Balance in the Rapidly Changing World of Marketing, Events 14 June 2005, Internet Advertising Law Essentials You Need to Know, Events 19 May 2005, Trademark Copyright and E-Commerce Licensing Transactions, Events 03 December 2004, Reality Check From Promotion Apprentice to Master of the Game, Events 25 May 2004, Direct Marketing Law: The New Essentials You Need To Know, Events 29 March 2004, Understanding and Complying with Sweepstakes and Promotions Law, Events 25 February 2004, The Legal Side of Internet Marketing: Comply, Survive and Thrive, Events 22 October 2003, Hot Topics In Advertising Law, Events 01 May 2003, The Tangled DM Legal Web - How to Weave Your Way Out, Events 07 April 2003, Consumer Promotions Law: Essentials You Need to Know, Events 07 April 2003, The Legal Side of Promotional Premiums: Know Your Rights and Avoid Disasters, Events 31 March 2003, Understanding and Complying with Sweepstakes and Promotions Law, Events 30 October 2002, Hot Topics In Advertising Law, Events 01 September 2002, Consumer Promotions Law: Essentials You Need to Know, Events |