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William M. Ried
Of Counsel


MAIN OFFICE:
New York
Willkie Farr & Gallagher LLP
787 Seventh Avenue
New York, N.Y. 10019-6099, U.S.A.
T 212-728-8729
F 212-728-9729
 
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William M. Ried is of counsel to the Intellectual Property Department of Willkie Farr & Gallagher LLP in New York.  Mr. Ried specializes in the intellectual property aspects of corporate transactions, copyright, publishing and data use law, trademark and domain name acquisition and enforcement, and technology and Internet agreements.

Mr. Ried’s practice focuses on counseling news, traditional and new media and financial services companies.

Selected Professional and Business Activities
Mr. Ried has written articles on IP issues for hedge fund managers, recent IP case law, sui generis database protection and developing corporate Web sites, and regularly gives seminars on IP issues.  He is a member of the Information Technology Committee of the Association of the Bar of the City of New York, the Copyright Society of the USA, The Computer Law Association, and the Legal Affairs Committee of the Magazine Publishers Association and is the firm’s delegate to the International Trademark Association.  He also counsels not-for-profit corporations.

Prior Experience
Mr. Ried started his career in litigation, including eight years of IP litigation as an associate and a partner at Lewin & Laytin in New York City.  This practice included appearing in numerous district courts, investigating counterfeiting operations and conducting seizure actions in cooperation with federal and state authorities, conducting proceedings before the Trademark Trial and Appeal Board (“TTAB”) and successfully arguing before the Second, Ninth and Federal Circuit Courts of Appeal.  Mr. Ried was lead counsel on a number of published decisions, some of which established law on extraterritorial jurisdiction of the Lanham Act, established the relevance of post-sale confusion to trade dress infringement, vacated a judgment on consent and imposed sanctions for improper motion practice.

Selected Significant Matters
Media Transactions
  • Film Production.  Drafted an agreement for production of the film Hyam Pludzik:  American Poet for the Jonathan Plutzik and Lesley Goldwasser Family Foundation.

  • Subscription Liability:  Negotiated and closed the sale of the subscription liability of Bloomberg Personal Finance magazine to Time Consumer Marketing, Inc.

  • Television Rights:  Handled IP aspects of ACC Conference contract for broadcast of college football games by ABC and ESPN.

  • Custom Publishing:  Drafted agreements for custom publishing magazines and newsletters by Bloomberg Press.

  • Magazine Sale.  Negotiated the IP aspects of Bloomberg’s sale of Bloomberg Wealth Manager magazine to the National Underwriting Company.

Financial Services

  • Taxonomy Development .  Assisted the AICPA and its former committee, XBRL US, Inc., in negotiating a funding agreement with the SEC and a development subcontract to create US GAAP taxonomies in eXtensible Reporting Business Language.

  • Platform Development.  Negotiated for Bloomberg the IP aspects of a Master Relationship Agreement with IBM concerning development of a platform compatible with bulk market data delivery systems.

Technology

  • Satellites.  Counseled Space System/ Loral, Inc. on the IP aspects of negotiations to supply communication satellites to ICO Satellite Management, Intelsat and Raytheon.

  • Software.  Negotiated a software license and services agreement for D.A.V.I.D. with National Public Radio, negotiated software licenses for P. Schoenfeld Asset Management Integrated Business Systems with various licensors, Swiss Reinsurance Company and CoverageConnect.com.

  • Chip Technology:  Negotiated a license of software and computer chip topology from Bloomberg to Raytheon for use in a hand-held device to identify persons crossing national borders.

  • Data:  Counseled Bloomberg on the creation of a process for collecting data and populating databases and negotiated related vendor agreements.

  • Interactive Display:  Drafted agreements with the software developer, LED manufacturer and media artist involved in the creation of an interactive display for Bloomberg’s Tokyo offices.

  • Keyboards :  Drafted and negotiated for Bloomberg an agreement with Advanced Input Devices for the design and manufacture of keyboards.

  • Exam Automation:  Drafted initial agreement and participated in negotiations on behalf of the AICPA with Prometric, Inc. and the National Association of State Boards of Accountancy to automate the delivery of the UNIFORM CPA EXAMINATION.

  • IT Services:  Drafted an IT department service agreement for Soros Fund Management.

Internet

  • Web Development:  Negotiated Web site development agreements for the NYC 2004 Host Committee for use in connection with the 2004 Republican National Convention in New York City and with Monster.com for a Web page to attract and process applications of volunteers, and for St. Patrick's Cathedral, and counseled Howard Greenberg Galleries on development of Web site and copyright issues related to content, and Marsh & McLennan Companies, Inc. on the structure of Web sites run by affiliated companies.

  • Accounting Portal:  Participated in drafting and negotiating for the AICPA a portal agreement with CPA2Biz.

  • Web Certification:  Counseled the AICPA on the creation of the CPA WebTrust Program to certify Web sites, drafted international license agreements and reviewed advertising and promotional materials.

Enforcement

  • Trademark Litigation.  Supervised successful trial in China against infringement of BLOOMBERG trademark in Chinese by financial information providers in Shanghai, trial in Italy that resulted in acquisition of domain name and award of damages against local cyber pirate, successful litigation in the Czech Republic to force change in a locally registered corporate name.

  • TTAB Proceedings:  Handled the opposition of UGO Networks to several applications to register similar marks.

  • Domain Names:  Handled or supervised numerous successful UDRP proceedings to obtain domain names from cybersquatters.

Corporate Transactions

  • Stock.  Conducted or supervised IP diligence and negotiation in the sale of  Big 10 Tire Stores, Inc., and the acquisition by Warburg Pincus/OnTarget Jobs, Inc. of Dice Inc., an online job search company.

  • Assets.  Negotiated the IP aspects of the sale by Jupitermedia of its JupiterResearch division, D.E. Shaw's acquisition of F.A.O. Schwarz, and Techtronic Industries’ acquisition of the Hoover floor case business.

  • IPO:  Conducted due diligence and revised IP sections of the registration statement in connection with initial public offering of ev3, Inc., a marketer of medical devices.

  • Joint Venture:  Negotiated the IP terms of a Bell Helicopter Textron joint venture with Agusta-Un’Azeienda Di Finmeccanica SpA to manufacture and market Bell-Agusta helicopters.

  • Financing:  Supervised IP aspects of [loan] for Jupiter Media Inc. 

Miscellaneous

  • Trademark Licensing.  Negotiated for the Chairman of J. Crew a license of his rights to MADEWELL mark to J. Crew.

  • Employment Agreements:  Counseled SAC Capital on the enforceability of confidentiality and non-compete provisions in employment agreements for quantitative analysts.

  • Not-For-Profit Counseling:  Provide IP services to not-for-profit organizations such as HIP4KIDS, Inc., the National Multiple Sclerosis Society, the {_}Lupus, Lincoln Center for the Performing Art and Asphalt Green.
Education
1982, Georgetown University Law Center, J.D.
1978, University of Michigan, B.A.

Bar Admissions
New York, 1983

Courts
  • United States Court of Appeals, 2nd Circuit, 1988
  • United States Court of Appeals, 9th Circuit, 1990
  • United States Court of Appeals, Federal Circuit, 1992
  • United States District Court, Eastern District of New York, 1984
  • United States District Court, Southern District of New York, 1984
  • United States District Court, Western District of Wisconsin, 1989


Practice Focus
Communications, Media & Privacy
Intellectual Property

Education
  • 1982, Georgetown University Law Center, J.D.
  • 1978, University of Michigan, B.A.

Bar Admissions
New York, 1983

Courts
  • United States Court of Appeals, 2nd Circuit, 1988
  • United States Court of Appeals, 9th Circuit, 1990
  • United States Court of Appeals, Federal Circuit, 1992
  • United States District Court, Eastern District of New York, 1984
  • United States District Court, Southern District of New York, 1984
  • United States District Court, Western District of Wisconsin, 1989




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