vol 14, num 1 | October, 2017
Technology &
Intellectual Property
Visit the Technology & Intellectual Property Committee page
► IN this issue:
From the Desk of the Editor
Beverly A. Bernaman
Beverly A. Berneman
Golan Christie Taglia LLP
I am Beverly A. Berneman, and I am pleased to take on the role of the editor of the ABI Technology and Intellectual Property Committee’s e-newsletter. By way of background, I am a partner with Golan Christie Taglia LLP in Chicago. I hold a J.D. from Chicago Kent School of Law, and my practice started in bankruptcy law. I have been named a “Leading Lawyer” by the Leading Lawyers Network.

Over the years, I have developed a practice in technology and intellectual property law. As the tech and IP areas of my practice grew, I went back to school and received an LL.M. in Intellectual Property from The John Marshall School of Law. John Marshall then asked me to teach a course in bankruptcy and IP. I created the curriculum for the course and have now been teaching it for almost 15 years. I represent clients in numerous industries and help to protect the creative parts of their businesses in the areas of copyright, trademark and trade secrets. I haven’t abandoned my roots and so continue to represent debtors, creditors and other stakeholders in bankruptcy cases.

Writing and teaching the intersection of bankruptcy law and intellectual property law is a particular joy for me. But I never lose sight of the practical needs of a busy law practice on a day-to-day basis. That is why I publish a weekly blog, “IP News for Business” (http://connect.abi.org/e/107412/blog/2jpffb/278800783?h=Rgqcyv3_q8G-RDL2YlnmehF1j88QiRsZUJixBewv-oo), which has been named as one of the “100 Best Blawgs” by the American Bar Association Journal.

My goal as editor will be to find timely, thought-provoking and enlightening writings that will help prepare a bankruptcy practitioner for the ever-growing set of technology and IP issues, in bankruptcy cases as well as in a law practice. In keeping with my goal to be practical as well as scholarly, the newsletter will include a “Practical Tip.” The first one appears below.

But first, let me introduce you to the rest of the leadership of the Technology and Intellectual Property Committee.

Kenneth Kraft
Kenneth Kraft
Co-Chair: Kenneth Kraft is a partner and manager of Denton’s Toronto Insolvency Team and a member of the firm’s financial services law group. He focuses his practice on insolvency and finance, both secured and unsecured. Acting for lenders as well as borrowers, his expertise encompasses receiverships, informal workouts and all manner of restructurings under the Companies’ Creditors Arrangement Act and the Bankruptcy and Insolvency Act. Ken has been involved in numerous Canada/U.S. cross-border files, including Elephant & Castle, Talon Systems Inc., Nortel, Cogent Fibre and MTZ Zinc, along with proceedings in England, France, Australia and Israel. He has been listed as a leading lawyer in restructuring and insolvency in editions of Chambers Global: The World's Leading Lawyers for Business annually since 2010. In 2009, he was one of just two Canadian lawyers nominated for the BTI Client Service All-Star Team for Law Firms, which honors superior client service delivered to corporate counsel at Fortune 1000 and other large companies. In 2011, Ken was recognized for his expertise in insolvency and restructuring law in Corporate INTL Magazine’s “50 Best Lawyers in Canada.” Other recognitions include The Best Lawyers in Canada as one of Canada’s leading lawyers in the area of Insolvency and Financial Restructuring Law (2016-17); Expert Guides in the area of Banking, Financial and Transactional Law: Insolvency and Restructuring (2014); The Legal 500 Canada in the area of Restructuring and Insolvency (2015); and The Canadian Legal Lexpert Directory (2013-14) as one of Canada's leading lawyers in Insolvency and Financial Restructuring – Litigation.
Ericka Johnson
Ericka Johnson
Womble Carlyle Sandridge & Rice, LLP
Wilmington, DE
Co-Chair: Ericka Johnson has been a longstanding member of the Technology and Intellectual Property Committee, having previously served as the ListServe Editor, Newsletter Editor and Education Director. As of April 2017, she is now the co-chair of the committee. Ericka is a business bankruptcy and corporate restructuring bankruptcy attorney at Womble Carlyle Sandridge & Rice, LLP, and is licensed to practice in Delaware and New Jersey. She is experienced in representing a variety of parties in interest in complex chapter 11 cases. Ericka has represented debtors, debtor-in-possession lenders, official committees of unsecured creditors, secured and unsecured creditors, trustees, plan administrators, officers and directors, vendors and asset-purchasers both as Delaware and lead counsel. She also advises plaintiffs and defendants in bankruptcy and nonbankruptcy litigation matters, including breach of contract, breach of fiduciary duty, preference, fraudulent transfer and turnover actions. In addition to her legal counsel, Ericka’s clients benefit from her prior business and management experience at a leading bank holding company, where she managed in consumer finance operations and prepared departments for internal risk assessments and audits from the Office of the Comptroller of the Currency. She has been recognized as a “Rising Star” by Super Lawyers every year since 2013.
Paul R. Hage
Paul R. Hage
Jaffe Raitt Heuer & Weiss, P.C.
Education Director: Paul R. Hage is a partner at Jaffe Raitt Heuer & Weiss, P.C. in Detroit and represents debtors, secured and unsecured creditors, creditors’ committees, asset-purchasers and trustees in insolvency proceedings nationwide. Paul earned his Bachelor’s degree from James Madison College at Michigan State University, his J.D. from Loyola University Chicago School of Law and his LL.M. in Bankruptcy from St. John’s University School of Law in New York. He is certified by the American Board of Certification as a specialist in business bankruptcy law and serves as an adjunct professor at the University of Michigan Law School. Paul is a coordinating editor for the ABI Journal. He is a past chair of the ABI Unsecured Trade Creditors Committee, and was the recipient of ABI’s Committee Leader of the Year Award in 2017.
Dylan Trache
Dylan Trache
Nelson Mullins Riley & Scarborough LLP
Washington D.C.
Special Projects: Dylan Trache is a partner in the Washington, D.C., office of Nelson Mullins Riley & Scarborough LLP, where he focuses his practice on bankruptcy and financial restructuring. He has experience representing chapter 11 debtors, bankruptcy trustees, major creditors, and other parties in business bankruptcy cases and out-of-court workouts in many industries, including mass media, legal services, aviation, retail, manufacturing, government contracting, and food and beverage. Dylan also has experience representing plaintiffs and defendants in avoidable preference, fraudulent conveyance, claim objections and other bankruptcy litigation. His experience includes representing buyers and sellers of assets in 363 sales. He has been certified by the American Board of Certification in business bankruptcy law since 2007 and has been recognized in The Best Lawyers in America since 2012 in the field of Bankruptcy and Creditor Debtor Rights/Insolvency and Reorganization Law. He has also been recognized as a Washington, D.C., or Virginia Super Lawyer since 2013.
Matthew T. Faga
Matthew T. Faga
Markus Williams Young & Zimmermann LLC
Communications Manager: Matthew T. Faga is an attorney with Markus Williams Young & Zimmermann LLC, concentrating his practice in the area of bankruptcy and insolvency law, with a focus on the counseling and representation of secured creditors, corporate debtors, and trustees in chapter 7 and 11 bankruptcy cases and related adversary proceedings, as well as non-bankruptcy receiverships, workouts and restructurings. Matthew has a wide range of experience representing chapter 11 debtors in possession, from simple liquidations to complex reorganizations. Prior to accepting his current position, he clerked for Hon. Chief Judge Michael E. Romero of the U.S. Bankruptcy Court for the District of Colorado for four years. Before clerking, he was an associate attorney at another boutique bankruptcy law firm in Denver. Matthew is an experienced speaker and presenter on many bankruptcy and insolvency issues, and currently serves as the chair of the local bankruptcy rules committee. He has remained actively engaged in the bankruptcy community for well over a decade in various roles, and he is currently co-chair the Bankruptcy Subsection of the Colorado Bar Association and treasurer of the Business Law Section’s executive counsel.

Practical Tip: Intent to use (ITU) trademark applications allow an applicant to set a priority filing date for constructive use of a trademark before it is used in commerce. But an ITU cannot be assigned except to a successor to the business of the applicant if that business is ongoing and existing.[1] An improper assignment voids the application, so an ITU is listed as property of a bankruptcy estate because it is essentially debtor’s inchoate right that may become a fully developed right once the trademark is used in commerce. However, the ITU should not be considered property of value that can be transferred in a sale of the debtor’s assets.

Looking to Become More Involved? We are searching for an ABI member who would like to become more involved with our committee by serving as our Member Relations Director. The Member Relations Director is responsible for welcoming new and existing members, responding to member inquiries, helping to grow the committee, and energizing the committee members to get more involved with the Committee. No formal application is required; just email Ericka Johnson at erjohnson@wcsr.com to let her know of your interest in the position.

[1] See 15 U.S.C. § 1060(a)(1).
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