Barry M. Benjamin

Barry M. Benjamin

Barry Benjamin's practice covers advertising, intellectual property, technology, and media law, focusing in three key areas: litigation, advice and counseling, and regulatory defense. His clients include major corporate advertisers, start-up ventures, and small and medium-size agencies and companies.

As an experienced litigator, Mr. Benjamin handles trademark and false advertising claims under the Lanham Act, trade dress violations, copyright claims, misappropriation, and fraud claims. He has extensive experience providing pre-litigation counseling, as well as taking matters through trial.

Outside of the litigation context, Mr. Benjamin advises and counsels clients in the advertising, technology, and media industries on the development of their advertising and marketing strategies, and protection of their intellectual property. His understanding and breadth of knowledge of the broad legal areas falling under the umbrella of "advertising law," including trademarks, copyright, the First Amendment, the rights of privacy and publicity, fair use, 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, and sponsorship agreements to licensing deals and Web publishing, and data sharing arrangements. He advises on the structure of and reviews advertising campaigns, and drafts terms and conditions for all forms of advertising and promotion marketing initiatives, including sweepstakes, contests, 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 cancellation proceedings in the U.S. Patent and Trademark Office.

His practice includes technology-related areas such as advising on the development of web site terms of use, privacy policies, data collection, data security, breach notification, and e-mail marketing 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.

Selected Experience

· Represented media publisher defending claims of copyright infringement and hot news misappropriation.

· Defended Internet marketer and web hosting company from fraudulent advertising practices and unfair and deceptive trade practice allegations by state attorney general.

· Advised advertiser on nationwide sweepstakes promotion launched during Super Bowl.

· Represented children's clothing designer asserting copyright infringement claims.

· Represented corporate education and training company asserting theft of trade secrets and copyright infringement claims for copying web site against former employee.

· Negotiated Olympics on-air talent clothing outfitting agreement on behalf of Men's apparel designer.

· Negotiated Nascar Sponsorship agreement on behalf of over the counter drug manufacturer.

· Advised Internet network advertising agency specializing in social networking on behavioral targeting privacy issues and updates to privacy policy.

· Negotiated advertising agency agreement on behalf of agency with international mobile phone carrier.

· Advised international cruise line on privacy and cross-border consumer personal data transfer issues.

· Defended Internet auction web site from claims of fraudulent sales of branded merchandise by brand advertisers.

· Advised national quick service retail food company on engaging in user generated content and social network marketing efforts.

· Defended footwear maker from Right of Privacy/Publicity claims by models whose images were used on packaging.

· Drafted privacy policy, web site terms of use, and official rules for user generated content contest.

· Advised web site operator on compliance with state lottery and gambling laws concerning Internet sales of lottery and gambling devices.

· Represented individual shareholder's withdrawal and buy out of ownership interest in Internet social networking web site.

· Advised national real estate property owner and manager on negotiating software license for residential property management.

· Coordinated international apparel brand owner's charitable commercial co-venturer compliance with state law registration and filing obligations.

· Advised advertising agency on use of parodies of celebrity names in advertising concepts.

· Drafted e-mail marketing policy and Can-Spam compliance for corporate printing company.

· Advised television network broadcaster on state gambling laws in connection with proposed televised charity poker tournament.

· Advised financial institution on compliance with 50 state telemarketing laws.

· Advised agency on appropriate processes and procedures for event marketing promotion.

· Advised medical device manufacturer on state regulations around corporate fund raising efforts (raffles, casino night).

Publications, Articles and Speeches

· Speaker, "Virtual Worlds, Social Networks, User Generated Content," International Trademark Association Trademark Law and the Internet Forum, February 9-10, 2009

· Speaker, "Understanding and Complying With Sweepstakes and Promotions Law," New York City Bar Association, "Drafting Official Rules & Preparing for the Worst," December 12, 2008

· Speaker, "30th Annual PMA Promotion Marketing Law Conference: The Message Is The Medium: Consumer Marketing In The Age Of Ubiquity," November 20-21, 2008

· Speaker, "Marketing and Advertising Law Update," State of Nevada Gaming Law Section, 2008 Gaming Law Conference, November 7, 2008

· Speaker, "Sweepstakes Contents Promotions," American Conference Institute, "Marketing To Children," October 20, 2008

· Speaker, "Current Issues in Trademark and Copyright Licensing Transactions," Law Seminars International, Current Issues in Complex IP Licensing, September 11-12, 2008

· Co-author, "Protecting Against Pranksters When Running User-Generated Contests," Online Media Daily, June 18, 2008

· Speaker, "Regulatory Summit For Advertisers and Marketers," American Conference Institute, "Advertising in Highly Regulated Industries, June 17-18, 2008

· Speaker, "Regulatory Kid Watch: Ensuring Privacy and Safety When Manufacturing and Marketing Products That Appeal To Children," American Conference Institute, April 1-2, 2008

· Speaker, "Negotiating Promotion Contracts: Key Issues in Negotiating Promotion Contracts," Promotion Marketing Association's "29th Annual Promotion Marketing Law Conference," November 15, 2007

· Speaker, American Conference Institute's Conference "Sweepstakes, Contests & Promotions," October 10, 2007

· Speaker, "Other Trademark, Copyright and E-Commerce Related Licensing Transactions," Law Seminars International, "Complex Intellectual Property Licensing" Conference, Philadelphia, PA, June 22, 2007

· Author, "Colliding Worlds in Copyright," Mediaweek, April 30, 2007

· Author, "A Blurry Distinction: Commercial vs. Non-Commercial Speech," The Connecticut Law Tribune, April 2, 2007

· Author, "Email Marketing and CAN-SPAM: Practical Consideration," Subscription Marketing, January/February 2007

· Author, "Better Discloser-How to Make Product Integration More Transparent for Viewers," Mediaweek, December 19, 2006

· Speaker, "Case Study of the Issues Facing Entertainment, Media and Advertising Industries In Setting Up Promotional Blogs," Law Seminars International Blog Law Conference: Legal issues, Liabilities and New Opportunities, November 16-27, 2006

· Speaker, "The Intellectual Property Think Tank - A Case Study About 'Good Ideas' And Their Consequences," New York State Bar Association, IP Law Section, October 12-15, 2006

· Speaker, "Hot Topics In Advertising & Marketing Law 2006 - The Law of Sweepstakes and Contests" CLE Program, New York City Bar Association, September 27, 2006

· Author, "Information Security - More Than Just Consumer Notification, And Already Here," The Metropolitan Corporate Counsel, September 2006

· Author, "A Consumer's "Opt-In" Must Be Clear," Alert, August 21, 2006

· Barry M. Benjamin Serves as Judge for 2006 International Echo Awards

· Author, "FCC's New Junk Fax Regulations," Alert, July 5, 2006

· Speaker, "Consumer Promotion Law: Essentials You Need To Know," The Incentive Show, May 4, 2006

· Author, "Privacy Officers Should Review Effect of Google's New Search Across Computer Tool Before Permitting Use By Employees," Alert, March 1, 2006

· Speaker, "Information Security and Data Privacy Law, ('Help! Our Customer Data Has Been Stolen!')," Law Seminars International, New Technologies and New Media in Advertising Law, January 30-31, 2006

· Speaker, "Direct Marketing Laws," Association of National Advertisers, Advertising Law and Business Affairs Conference, January 26, 2006

· Author, "A Fine Line Between Placement and Payola," BRANDWEEK, January, 2006

· Speaker, "Hyperchange: Maintaining Balance In The Rapidly Changing World of Marketing, Beginning Workshop II Understanding Sweepstakes and Promotions Law," The Promotion Marketing Association, Inc., The 27th Annual PMA Law Conference, December 2, 2005

· Author, "Florida Drops Full Rules in Print Advertising Requirement for Sweepstakes Ads," Alert, November 28, 2005

· Author, "Advertising Disclaimers: disclaimers in small print must be clear and conspicuous," New Jersey Lawyer, August 15, 2005

· Author, "Ohio AG Lawsuit Highlights Need to Notify Consumers About Theft of Personal Data," Alert, July 22, 2005

· Author, "Update to Fax Marketers: Congress Creates," Alert, July 1, 2005

· Speaker, "Internet Advertising Law: Essentials You Need to Know," Marketing Expo & Executive Conference, June 14, 2005

· Speaker, "Trademark, Copyright and E-Commerce Licensing Transactions," Law Seminars International, "Complex Intellectual Property Licensing" Conference, Philadelphia, PA, May 19, 2005

· Speaker, "Reality Check: From Promotion Apprentice to Master of the Game - Beginner's Workshop II, Understanding Sweepstakes and Promotions Law," The Promotion Marketing Association, Inc., The 26th Annual PMA Law Conference, December 3, 2004

· Author, "Regulatory Enforcement Actions Serve as Warnings," Subscription Marketing, Vol. 11, No. 4, July/August 2004

· Speaker, "Direct Marketing Law: The New Essentials You Need To Know," DM Days, New York Conference & Expo, May 25, 2004

· Speaker, "Understanding and Complying With Sweepstakes and Promotions Law," The Association of the Bar of the City of New York, March 29, 2004

· Speaker, "The Legal Side of Internet Marketing: Comply, Survive and Thrive," The DMA/AIM Net.marketing Conference and Exhibition, February 25, 2004

· Author, "Marketing to Children," Metropolitan Corporate Counsel, December 2003

· Author, "Plan Ahead to Limit Potential Disasters," Marketing News, November 2003

· peaker, "Hot Topics in Advertising Law," CLE Program, The Association of the Bar of the City of New York, October 22, 2003

· Speaker, "The Tangled DM Legal Web - How To Weave Your Way Out," DMD New York Conference and Expo, DM Days, May 2003

· Speaker, "Consumer Promotions Law: Essentials You Need to Know," The Incentive Show, April 7-8, 2003

· Speaker, "The Legal Side of Promotional Premiums: Know Your Rights And Avoid Disasters," The Incentive Show, April 7-8, 2003

· Speaker, "Understanding and Complying With Sweepstakes and Promotions Law," The Association of the Bar of the City of New York, March 31, 2003

· Speaker, "Hot Topics in Advertising Law," The Association of the Bar of the City of New York, October 30, 2002

· Speaker, "Consumer Promotions Law: Essentials You Need To Know," The Motivation Show, September 2002

Community and Professional Activities

· Consumer Affairs Committee, New York City Bar Association

· Government and Legal Affairs Committee, Promotion Marketing Association

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