Elizabeth R Burkhard

Partner
  • T 617.573.5850

Elizabeth R. Burkhard is a member of Holland & Knight's Litigation Practice Group and Cybersecurity and Privacy Team, and focuses her practice in the areas of intellectual property licensing, electronic commerce and information technology, data security and privacy and intellectual property portfolio protection. Ms. Burkhard advises clients on a variety of intellectual property and information technology matters, including software development and integration, open source software issues, IT outsourcing transactions, online social networking, electronic contracting, as well as regulatory compliance. She also has significant experience advising clients regarding "best practices" in data privacy and protection, including internal investigations and assessments of risk and compliance with state privacy and security laws, developing and writing company policies and procedures, and establishing international compliance frameworks for companies.

Ms. Burkhard's intellectual property licensing and portfolio protection work involves obtaining and maintaining rights under trademark, copyright and trade secret laws in a variety of industries, including software, emerging technologies, online retail, entertainment and education. She has experience assisting clients in various aspects of trademark protection, including prosecuting and defending inter partes proceedings before the Trademark Trial and Appeal Board, prosecuting trademark related complaints through ICANN's domain name dispute resolution procedure, conducting trademark infringement litigation, drafting and negotiating trademark license, consent, assignment and domain name transfer agreements.

Ms. Burkhard provides pro bono intellectual property advice and assistance to nonprofit organizations benefiting children, veterans and cancer patients. 

Representative Engagements

  • Conducting due diligence and negotiating representations and warranties in connection with a $650 million transaction involving global locations and intellectual property
  • Representing an international pharmaceutical company with email migration project, including providing guidance for compliance with the EU Data Protection Directive, assisting with self-certification to the U.S. Safe Harbor, overseeing and interacting with foreign counsel to obtain advice concerning compliance with foreign national data protection and privacy laws
  • Advising an international pharmaceutical company concerning compliance with (i) call recording disclosure and consent requirements under the Electronic Communications Privacy Act, its implementing regulations and similar state laws, and (ii) robocalling requirements and restrictions under the Telephone Consumer Protection Act, the Telemarketing and Consumer Fraud and Abuse Prevention, respective implementing regulations, as well as similar state laws
  • Advising a healthcare industry service provider in connection with security breach issues and compliance with PCI-DSS, including coordinating services of a Qualified Security Assessor
  • Representing leading international manufacturer of toys and games, and trademark licensor in connection with widely publicized trademark, copyright and character licensing transaction with online social gaming service provider
  • Representing nationwide provider of satellite television in pre-litigation trademark dispute with primary competitor; after an exchange of demand letters and high level talks between business and legal teams, the matter was favorably resolved
  • Advising a national insurance and securities company concerning privacy of customer and employee information and security practices and procedures
  • Preparing privacy and security policies and terms of use. Advice includes guidance related to SEC Guidelines for Public Companies and Cybersecurity Risk Disclosures
  • Advising nationwide provider of E-911 location-based and emergency responder technology in connection with open source software advice

Honors & Awards

  • Rising Star, Massachusetts Super Lawyers magazine, 2013-2016
  • Rx for Excellence Award, Massachusetts Medical Law Report, 2011

Memberships

  • American Bar Association
  • Boston Bar Association
  • Massachusetts Bar Association
  • Boston Patent Law Association
  • American Intellectual Property Law Association