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  • U.S. Anticounterfeiting Resources: How Brand Owners Work with the Recordation System and Centers of Excellence

    Contains 1 Component(s)

    This webcast will provide an overview about the Centers of Excellence and Expertise (CEE) and will detail how brand owners can collaborate with these centers in their anticounterfeiting efforts. Speakers will provide a presentation on the activities and objectives of the Pharmaceuticals, Health & Chemicals CEE and the U.S. Customs and Border Protection Recordation System. Additionally, the webcast will have a detailed case study that demonstrates best practices collaboration between the Pharmaceutical CEE and an industry brand owner.


    This webcast will provide an overview about the Centers of Excellence and Expertise (CEE) and will detail how brand owners can collaborate with these centers in their anticounterfeiting efforts. Speakers will provide a presentation on the activities and objectives of the Pharmaceuticals, Health & Chemicals CEE and the U.S. Customs and Border Protection Recordation System. Additionally, the webcast will have a detailed case study that demonstrates best practices collaboration between the Pharmaceutical CEE and an industry brand owner.

    Centers of Excellence and Expertise (CEE) transform the way U.S. Customs and Border Protection (CBP) approaches trade operations and works with the international trade community. The Centers represent CBP's expanded focus on “Trade in the 21st Century” by aligning with modern business practices, focusing on industry-specific issues, and by providing tailored support to unique trading environments. The Centers were established to increase uniformity of practices across ports of entry, facilitate the timely resolution of trade compliance issues nationwide, and further strengthen critical agency knowledge on key industry practices. 

    There are currently ten Centers of Excellence and Expertise in the country, each with a special industry focus:

    • Atlanta: Consumer Products & Mass Merchandising
    • Buffalo: Industrial & Manufacturing Materials
    • Chicago: Base Metals
    • Detroit: Automotive & Aerospace
    • Houston: Petroleum, Natural Gas & Minerals
    • Laredo: Machinery
    • Los Angeles: Electronics
    • New York: Pharmaceuticals, Health & Chemicals
    • Miami: Agriculture & Prepared Products
    • San Francisco: Apparel, Footwear & Textiles


    Robb Beckerlegge (Moderator)

    Partner, Baker & Hostetler

    Eric Buchanan

    Consumer Products & Mass Merchandising Center, U.S. Customs and Border Protection

    Goli Gharib

    U.S. Customs and Border Protection

    Tara Steketee

    Merck & Co., Inc.

  • Trademarks in Business Transactions: Behind Closed Doors, Getting the Deal Done

    Contains 2 Component(s), Includes Credits

    Trademarks in Business Transactions: Behind Closed Doors, Getting the Deal Done is the first segment in the Business Transactions Webcast Series. Hear from an expert panel of speakers as they discuss practical tips on how to get the deal done. Speakers will also share experiences from “behind the closed doors” of trademark transactions.

    Trademarks in Business Transactions: Behind Closed Doors, Getting the Deal Done is the first segment in the Business Transactions Webcast Series. Hear from an expert panel of speakers as they discuss practical tips on how to get the deal done. Speakers will also share experiences from “behind the closed doors” of trademark transactions.

    Additional topics that will be covered include: 

    • Key tools and strategies for getting transactions through where trademarks and brands are the primary assets.
    • Pointers on developing a tailored plan for your transaction.
    • Negotiation of a watertight agreement with a focus on areas where problems may arise (e.g. in relation to the definition of transferring assets, warranties, liability and indemnification provisions).

    Nicola Benz (Moderator)

    Managing Partner, FRORIEP (Switzerland)

    Nicola Benz's practice focuses on technology and IP transactions. She assists companies of all sizes, from start-ups to established players, as well as investors, suppliers and customers across a broad range of industries and sectors.

    Ms Benz's expertise — gathered both as an external counsel and through in-house secondments — covers licensing, joint ventures and collaborations, outsourcing, assignments and associated IP issues. She advises on franchising, sponsorship and trademark exploitation, the sale and purchase of trademark portfolios, and the protection and defence of brand rights on the internet and elsewhere. She also has considerable experience advising on all types of commercial contract, competition and regulatory issues and data protection.

    Ms Benz is recognised as a leading trademark, patent and technology licensing lawyer in professional publications and listings such as WTR1000 and Chambers Europe, which praises her "intelligence, responsiveness, pragmatism and ability to turn around very detailed comments quickly".

    Born in Scotland, Ms Benz obtained her law degree from the University of Edinburgh (LLB Hons) in 1997. She joined Froriep as associate in 2002, became a partner in 2010, and managing partner in 2017.

    Her working languages are English and German.

    Ms Benz is a member of the Zurich and Swiss Bar Associations, the International Trademark Association, the Licensing Executives Society and the International Technology Law Association.

    Read more about Nicola here.

     

    Rachelle A. Dubow

    Partner, Morgan, Lewis & Bockius LLP (United States)

    Rachelle Dubow’s practice focuses on counseling, protection, and licensing of intellectual property rights, with an emphasis on trademark prosecution and global brand management. Rachelle assists domestic and multinational companies in the selection, clearance, registration, and enforcement of trademarks, the licensing of trademark rights, and the related manufacturing and distribution of licensed products and services. She also handles franchise-related matters, including counseling on the acquisition of franchise systems, and negotiating franchisee agreements and area development agreements for both franchisors and franchisees. In addition, Rachelle assists with general IP diligence, including franchise-related issues, in both M&A and investment-related transactions.

    Rachelle represents clients in a wide variety of industries that include finance, entertainment, sports, consumer products, medical and pharmaceutical products, life sciences, computer technology, and the Internet. 

    Rachelle does a considerable amount of pro bono work for entities including the Family Law Project for Battered Women, the Economic Justice Project, the Center For Women and Enterprise, Washington Area Lawyers for the Arts, and currently assists many of the firms pro bono clients with IP related matters including Partners in Health, a nonprofit corporation, the Say Yes to Education Foundation and the Union of Orthodox Jewish Congregations of America, among others. Rachelle is also actively involved in her community and serves on multiple committees for Combined Jewish Philanthropies, Chabad of the North Shore, Cohen Hillel Academy and Congregation Shirat Hayam.

    Read more about Rachelle here

    Robert Guthrie

    Partner, Osborne Clarke LLP (United Kingdom)

    Rob is a Partner in Osborne Clarke’s intellectual property litigation department. He advises clients on all aspects of intellectual property protection, enforcement and dispute resolution, with a particular emphasis on brands and copyright.

    Rob has worked with a number of high profile clients, in particular in the fashion, entertainment and new media sectors, and regularly acts for those clients before the UK courts and the UK and EU trade mark registries. Recent cases have included the successful defence of Sky’s Now TV from a passing off claim brought by the operators of  a Now TV in Hong Kong, in a case that went all the way to the UK’s Supreme Court.

    Rob is described by Legal 500 as a “commercially minded, technical expert” and by WTR 1000 as “a first choice adviser for any brand protection work”. He is an active member of MARQUES, being Chair of its European Trademark Law and Practice Team and a member of the EU Trade Mark Reform Task Force.

    Read more about Rob here

    Astrid Luedtke

    Salaried Partner, Heuking Kühn Lüer Wojtek (Germany)

    Astrid Luedtke is a Salaried Partner at the German law firm Heuking Kühn Lüer Wojtek. She has far-reaching expertise in all areas of intellectual property as well as media and data protection law. She advises German and foreign companies of all sizes on all areas of IP law. Her expertise covers the development of trademark strategies, trademark prosecution and litigation as well as advising on licensing contracts on all types of intellectual property rights such as patents, design patents, trademarks, know-how and copyrights. As an IP expert she also frequently advises clients on transactions involving IP rights. 

    She regularly holds lectures and workshops and serves regularly as a lecturer for Media Law at Hochschule Fresenius, University of Applied Sciences, in Düsseldorf.

     Read more about Astrid here

     

     

    CLE for the following states have been approved and a certificate of attendance is available for download:

    • California
    • Connecticut
    • Illinois
    • Ohio
    • Washington

    Additional states will be added as they are approved. Please email cle@inta.org with any questions.

  • The Mediation Toolbox: Best Practices in Mediation for Europe, the Middle East, and Africa--How to Avoid Throwing a Monkey Wrench into the Works

    Contains 1 Component(s)

    The webcast will review the availability of mediation in several geographic regions including Europe, the Middle East, and Africa.

    The webcast will review the availability of mediation in several geographic regions including Europe, the Middle East, and Africa. The panel will conduct an overview of the applicable laws in these regions and discuss best practices for leading or participating in the mediation process.

    Felicia J. Boyd (Moderator)

    Partner at Barnes & Thornburg LLP

    Felicia J. Boyd is a partner with Barnes & Thornburg LLP in the firm’s Minneapolis office, where she has served as co-chair of the firm’s Intellectual Property Department.
    Ms. Boyd focuses her practice on complex intellectual property litigation and has led plaintiff and defense litigation on a large variety of claims related to patents, copyrights, trademarks, and trade dress in federal and state court as well as complex matters before the Trademark Trial and Appeal Board (TTAB). Her litigation experience spans a diverse array of industries, including financial and investment services, medical devices, software, music, pharmaceuticals, and manufactured goods. Ms. Boyd’s victories have included preliminary injunction motions, summary judgment motions, favorable settlements, and jury verdicts at trial. She is a registered patent attorney with a bachelor's degree in chemistry and has represented clients in contested proceedings before the U.S. Patent and Trademark Office (USPTO).

    Read more: http://www.btlaw.com/Felicia-J...

    Shiri Kasher-Hitin

    KasherLaw

    Shiri Kasher-Hitin is an expert in intellectual property law and a mediator in commercial law with KasherLaw.

    Over the past two decades, Kasher-Hitin has advised Israeli and foreign companies and provided them with counseling services and legal representation.

    Ms. Kasher-Hitin has extensive experience in intellectual property law in the commercial sector, in general, and with media companies in particular.

    She has acted as both an internal and external consultant to companies on numerous aspects of intellectual property, including development of intellectual property, protection thereof, negotiations for its commercial use and litigation.

    Ms. Kasher-Hitin has led dozens of commercial mediation procedures that were resolved in settlements.

    She handles mediation on a range of issues arising from all varieties of commercial disputes, including those involving violations of agreements and breach of intellectual property rights between commercial entities and private parties.

    Mark Mordi, FCI Arb.

    Litigation Partner at Aluko & Oyebode

    Mark is a litigation partner at Aluko & Oyebode. He is one of the core members of the firm’s dispute resolution team. He is a seasoned litigator who has successfully carved a niche for himself in intellectual property and maritime enforcement matters, as well as negotiating out of court settlements in favor of clients in this area.

    His areas of specialization include intellectual property, admiralty, commercial litigation and arbitration. He also represents a number of international Companies active in the spheres of Pharmaceuticals, Technology, Food and Beverages in intellectual property disputes and arbitration matters in Nigeria.

    In the course of his intellectual property enforcement practice, Mark has prosecuted several class actions; IP enforcement matters ranging from trademark infringements; enforcement of rights to letters of patents; copyright enforcement actions; unlawful interference with the performance of contract cases for major multinational/local pharmaceutical and manufacturing companies; as well as opposition proceedings before the Trademark Registry. In the course of prosecuting these cases he has successfully obtained and enforced, in every case, pre-emptive remedies in the nature of Anton Piller Orders, temporary restraining orders or injunctions against counterfeit producers, parallel importers and passers-off; and also renders anti-counterfeiting advice.

    James Tumbridge

    Partner, Barrister at Venner Shipley

    James is an Intellectual Property Litigation partner in our legal services team. He has extensive experience in commercial litigation, intellectual property and alternative dispute resolution (ADR). His practice has covered a wide variety of matters including; commercial litigation, admiralty, employment, insolvency, banking, pensions, and mortgage claims. He focuses on intellectual property disputes; and has been involved in cases such as the Supreme Court decision in R. v. Prudential on the issue of whether legal professional privilege applies to non-lawyers representing the interests of the IP community, the House of Lords decision in RPR v Yeda concerning patent entitlement to a cancer therapy, CCH v the Law Society of Upper Canada a decision of the Canadian Supreme Court concerning copyright in judgments, trade mark cases such as the Enterprise Court decision protecting the Dyno-Rod mark from rogue plumbers, as well as design and confidential information disputes in the High Court.

    James’ work also extends to anti bribery compliance, data protection matters; compliance for politicians and political campaigns, advertising and promotions, as well as issues with data capture for those dealing in virtual currency and customer data.  He has been an ad hoc advisor to various UK MPs and MEPs on a range of IP and dispute issues. Through his engagement with policy makers he has extensive Government relations experience and advises clients on how to prepare for legislative changes and regulation compliance.

    James is also a qualified mediator, listed with the world intellectual property organisation (WIPO), the United Kingdom Intellectual Property Office, ADR Group, IDRS, Talk Mediation, Clerksroom and a number of other ADR providers.  He also spent two years chairing the International Trade Mark Association’s ADR committee.

  • Overview of Corporate Transactions and Due Diligence

    Contains 2 Component(s), Includes Credits

    Overview of Corporate Transactions and Due Diligence is the second segment in the Business Transactions Webcast Series. In this segment, an expert panel of speakers will discuss due diligence tips and tricks from both the buyer and seller perspectives.

    Overview of Corporate Transactions and Due Diligence is the second segment in the Business Transactions Webcast Series. In this segment, an expert panel of speakers will discuss due diligence tips and tricks from both the buyer and seller perspectives.

     Additional topics that will be covered include:

    • Share sale versus asset sale, points to watch.
    • Defining the scope of due diligence at the outset.
    • What information needs to be collected through due diligence
    • Examples of complications that may become apparent in the course of a due diligence exercise, and suggestions on how they may be overcome
    • Steps to be taken post-closing, and the impact of due diligence on post-closing work

    Nicola Benz (Moderator)

    Managing Partner, FRORIEP (Switzerland)

    Nicola Benz's practice focuses on technology and IP transactions. She assists companies of all sizes, from start-ups to established players, as well as investors, suppliers and customers across a broad range of industries and sectors.

    Ms Benz's expertise — gathered both as an external counsel and through in-house secondments — covers licensing, joint ventures and collaborations, outsourcing, assignments and associated IP issues. She advises on franchising, sponsorship and trademark exploitation, the sale and purchase of trademark portfolios, and the protection and defence of brand rights on the internet and elsewhere. She also has considerable experience advising on all types of commercial contract, competition and regulatory issues and data protection.

    Ms Benz is recognised as a leading trademark, patent and technology licensing lawyer in professional publications and listings such as WTR1000 and Chambers Europe, which praises her "intelligence, responsiveness, pragmatism and ability to turn around very detailed comments quickly".

    Born in Scotland, Ms Benz obtained her law degree from the University of Edinburgh (LLB Hons) in 1997. She joined Froriep as associate in 2002, became a partner in 2010, and managing partner in 2017.

    Her working languages are English and German.

    Ms Benz is a member of the Zurich and Swiss Bar Associations, the International Trademark Association, the Licensing Executives Society and the International Technology Law Association.

    Read more about Nicola here.

     

    Sara Blotner

    Director and Associate General Counsel for Intellectual Property, Citigroup Inc. (United States)

    Sara Blotner is a Director and Associate General Counsel for Intellectual Property at Citigroup Inc. Since 1998, Sara has handled all aspects of IP for Citigroup and all of its subsidiaries on a global basis.  Her primary practice areas include worldwide trademark counseling, clearance, prosecution and conflicts, right of publicity, corporate transactions, licensing, internet and social media. 

    Sara began her career with the trademark group of Fish & Neave and went in-house to NBA Properties Inc. in 1995. Sara graduated cum laude from Benjamin N. Cardozo School of Law.

    Sara has lectured on Intellectual Property issues for the International Trademark Association, Foley and Lardner, Holland and Knight, Kilpatrick Stockton, Lawyer’s Alliance, National Association of Women Lawyers, NYIPLA, Practicing Law Institute, Pro Bono Partnership and ALM.

    Peter Bolger

    Partner, Intellectual Property, Technology and Privacy, LK Shields (Ireland)

    Peter is Head of our highly regarded Intellectual Property, Technology and Privacy team. He advises clients on all aspects of privacy law in respect of compliance, registration, international transfers, policies and audits including the GDPR.

    Peter is Head of our highly regarded Intellectual Property, Technology and Privacy team.

    His substantial practice centres on assisting national and international clients in dealing with the Irish and EU aspects of IP protection, strategy, commercialisation and enforcement, domestic and cross-border commercial, IP, tech and tax-related agreements and re-organisations and all aspects of technology agreements from enterprise to SaaS licensing (with a focus on fintech).

    Peter advises clients on all aspects of privacy law in respect of compliance, registration, international transfers, policies and audits including the GDPR.

    Peter also specialises in media law for Irish and multinational clients.

    Peter is an Irish solicitor and an Irish and European Trade Mark and Design Attorney.

    Read more about Peter here

    Laurence Rickles

    Chief Trademark Counsel, Teva Pharmaceuticals

    Larry has been a trademark and copyright attorney for over 25 years.  Since December 2015, he has been Chief Trademark Counsel at Teva Pharmaceuticals, in Horsham, PA.  There, he is responsible for managing Teva’s team of trademark professionals, who handle Teva’s portfolio of almost 35,000 trademarks in dozens of countries worldwide.

    Prior to Teva, Larry’s in-house experience included almost 17 years at Johnson & Johnson in New Brunswick, NJ.  While at J&J, he was the trademark attorney responsible for many of J&J’s well-known brands, including TYLENOL® , MOTRIN®, REACH® toothbrushes, and OneTouch® blood glucose monitors and test strips, as well as significant portions of J&J’s pharmaceutical trademark portfolio, including REMICADE® and STELARA®. He also worked on numerous character license agreements on behalf of the BAND-AID® brand, as well as J&J’s sponsorship of the Olympics and soccer’s World Cup.

    Larry has also been an outside counsel, namely, as a Member of the Intellectual Property Group of Eckert Seamans Cherin & Mellott, in Philadelphia, PA.  While there, his practice focused on trademark, copyright, and unfair competition law, including trademark portfolio management; trademark opposition and cancellation proceedings; and unfair competition matters, including advertising issues, protection against counterfeit goods and marks, and misappropriation of trade dress.

    Larry was an associate at Fross Zelnick Lehrman & Zissu, as well as Simpson Thacher & Bartlett, and is a graduate of Harvard Law School.

    CLE for the following states have been approved and a certificate of attendance is available for download:

    • California
    • Connecticut
    • Illinois
    • Ohio
    • Washington

    Additional states will be added as they are approved. Please email cle@inta.org with any questions.

  • The Answer Is Not Always “It Depends:” Fair Use and Freedom of Expression under Copyright and Identity Rights Laws

    Contains 1 Component(s) Recorded On: 05/23/2017

    Why can’t I use this photograph? I downloaded it from the Internet and I see it all over!?” “That actor has been dead for a long time, it would be funny to reference him in this tweet. You lawyers have no sense of humor!” Have you encountered these questions/reactions in your practice? If so, then this panel will help you. We will explore the sometimes challenging but always interesting application of the doctrine of fair use--using other parties’ content, names, and likenesses. (Intermediate Level)

    Pre-recorded from INTA's 2017 Annual Meeting. 

    The panel will discuss the different standards under U.S. copyright and  right of publicity laws, touch upon how similar issues are treated in Europe, and address hypothetical examples of ad copy, press releases, and social media postings typically encountered by companies and outside counsel in order to provide real world guidance.

    Craig Mende (Moderator)

    Fross Zelnick Lehrman & Zissu, P.C. (United States)

    Anthony T. Falzone

    Pinterest, Inc. (United States)

    Jonathan S. Jennings

    Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP (United States)

  • Wine, Women, Song…and a Cigarette: The Perils of International Advertising

    Contains 1 Component(s) Recorded On: 05/23/2017

    The increase in both globalization of brands and digitalization of communications means that brand owners are looking to create single campaigns that can be used to flow through their key international markets. That’s great in theory, but what are the practical problems that these international advertising campaigns face? (Intermediate Level)

    Pre-recorded from INTA's 2017 Annual Meeting. 

    This session will take a helicopter viewpoint of the advertising industry itself, the use of international campaigns, and drill down into two areas that highlight the different national approaches: (1) taste and decency and (2) comparative advertising. We will also look to the future by discussing the impact of plain packaging on the tobacco industry and what this might mean down the line for advertising within the alcohol, fast food, and soft drink industries.

    Dominic Farnsworth

    Lewis Silkin LLP (United Kingdom)

    Christopher R. Chase

    Frankfurt Kurnit Klein & Selz, P.C. (United States)

    Stephen Marcus Stern

    Corrs Chambers Westgarth (Australia)

  • Trade Dress: Brands vs. Private Label—When Is It Too Close for Comfort?

    Contains 1 Component(s) Recorded On: 05/22/2017

    Participate in a lively discussion of the general principles of trade dress and other protected rights in packaging, the balances, and history of trade dress struggles between private label/store brands and consumer products. (Intermediate Level)

    Pre-recorded from INTA's 2017 Annual Meeting. 

    Participate in a lively discussion of the general principles of trade dress and other protected rights in packaging, the balances and history of trade dress struggles between private label/store brands and consumer products, as well as the business realities and other influencing factors that come into play in this area of practice.

    Speakers will offer their views on:

    • General trade dress protection principles
    • The history of trade dress struggles between private label and consumer products
    • The current state of affairs
    • The business realities and other influencing factors (Retail and brands are often competitors and business partners

    Karen Feisthamel (Moderator)

    Kacvinsky Daisak Bluni PLLC (United States)

    Melanie Bradley

    Colgate-Palmolive Company (United States)

    Joshua J. Burke

    General Mills, Inc. (United States)

    Ann Wessberg

    Fredrikson & Byron, P.A. (United States)

    John Pickerill

    Fredrikson & Byron, P.A. (United States)

  • Influential Communications: Becoming the Trusted Advisor

    Contains 1 Component(s) Recorded On: 05/22/2017

    We all counsel clients for a living, but are we really communicating in a way that connects and inspires? (Intermediate Level)

    Pre-recorded from INTA's 2017 Annual Meeting. 

    This “soft skills” training session is designed to improve our ability to communicate in a manner that builds trust and helps us to better connect with clients and colleagues. Areas of focus will include active listening, culture and bias, non-verbal skills, recognizing and adapting to communication styles, and emotional intelligence and authenticity.

    David H. McDonald

    Johnson & Johnson (United States)

    Say Sujintaya

    Baker & McKenzie Ltd. (Thailand)

  • The Big Bang: When Trademarks Collide with Other IP Rights

    Contains 1 Component(s) Recorded On: 05/22/2017

    Unlike other IP rights that are subject to time-limited protection, the potentially infinite protection that trademarks enjoy makes them a valuable tool for extending the IP protection of a product.

    Pre-recorded from INTA's 2017 Annual Meeting. 

    Unlike other IP rights that are subject to time-limited protection, the potentially infinite protection that trademarks enjoy makes them a valuable tool for extending the IP protection of a product. This protection does, however, have its limits. This session will explore how different regions of the world address the conflict between (i) trademark protection for a product and (ii) patent, industrial design, and copyright protection for the same product. Topics covered will include:

    • Differences in rationales and procedures for protecting trademarks vs. other IP rights
    • Claiming trademark protection for product get-up with functional aspects
    • Trademark rights in an embodiment disclosed, but not claimed, in a patent
    • The interplay of and the clash between trademark and industrial design protection

    Anthony M. Prenol (Moderator)

    Blakes (Canada)

    Iain Connor

    Pinsent Masons LLP (United Kingdom)

    Glenn Gundersen

    Dechert LLP (United States)

    Michael Williams

    Gilbert + Tobin (Australia)

  • The Trademark Attorney’s Second Job: Spotting Key (Non-IP) Issues in Social Media

    Contains 1 Component(s) Recorded On: 05/22/2017

    This panel will focus on legal areas that are not exactly within the typical scope of a trademark professional. (Beginner to Intermediate Level)

    Pre-recorded from INTA's 2017 Annual Meeting. 

    This panel will focus on legal areas that are not exactly within the typical scope of a trademark professional, but areas on which they will likely come across or overlap now that social media is a part of doing business.

    Issues to be discussed include the following:

    • U.S. FTC decisions on social media advertising, including native advertising, influencer advertising, endorsements, employee advocacy programs, and best practices.
    • Issues in live broadcasting on social media (includes United States and China).
    • Other watch-outs for social media advertising or communications based on regulatory concerns (includes United States and China).
    • Tips for social media policies (includes United States and China).
    • Overview of China’s social media, including an overview of common social media platforms, trends, China State Administration of Industry and Commerce SAIC) decisions on social media advertising, and legal watch-outs or best practices.

    Ann Chen

    Abbott Laboratories (United States)

    Jake Feldman

    Johnson & Johnson (United States)

    Anna Mae Koo

    Vivien Chan IP Services (Beijing) Limited (China)