Overview

Elizabeth R. Burkhard is an attorney in Holland & Knight’s Boston office. Ms. Burkhard focuses her practice on transactional matters in the areas of intellectual property (IP) licensing, IP due diligence for corporate transactions, electronic commerce and information technology (IT), data security and privacy, as well as IP portfolio protection.

IP Licensing and M&A Transactions

Ms. Burkhard advises clients on a variety of IP and IT matters, in particular in connection with mergers and acquisitions (M&A) transactions and finance transactions, including conducting due diligence and negotiating IP terms related to ownership and licensing of IP, software development and integration, open source software issues, and IT and information security matters. Ms. Burkhard also advises clients in connection with IP licenses, IT outsourcing transactions, online social networking issues, electronic contracting, as well as contract issues related to regulatory compliance. Additionally, Ms. Burkhard assists banks and other financial institutions in negotiating core banking and similar technology vendor agreements.

IP Portfolio Protection

Ms. Burkhard's IP 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 the Internet Corporation for Assigned Names and Numbers' (ICANN) domain name dispute resolution procedure, as well as drafting and negotiating trademark license, consent, assignment and domain name transfer agreements.

Privacy and Information Security

Ms. Burkhard 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. Her M&A transactional experience also involves due diligence and advising clients related to privacy and information security matters relevant to buying and selling companies.

Pro Bono

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

Representative Engagements

  • Serving as an intellectual property (IP) specialist in connection with more than 100 mergers and acquisitions (M&A) transactions over the past five years
  • Conducting due diligence and negotiating the IP terms of a large publisher’s acquisition of the IP portfolio of a prominent children’s artist
  • Representing multiple banks in negotiating technology services contracts with a leading core banking provider
  • Conducting due diligence and negotiating representations and warranties in connection with a $650 million transaction involving global locations and intellectual property
  • Advising early-stage companies in a range of industries regarding IP protection and transactional best practices in preparation for a sale transaction
  • Providing trademark advice, portfolio prosecution and management to a leading human resource management company with an international trademark portfolio
  • Representing a prominent cruise line with a domain name cybersquatting dispute, including filing an in rem action that was appealed to the circuit court and resolved in the cruise line's favor
  • 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

Representative Experience

  • General Compliance and Corporate Governance: developing and drafting disclosures pertaining to privacy and data security, including privacy policies, privacy statements, terms of use and end-user license agreements
  • Intellectual Property: preparing, filing and prosecuting trademark applications; counseling clients on obtaining and maintaining patents and trademark registrations; drafting and negotiating licenses, consent and co-existence agreements, assignments, and domain transfer agreements; prosecuting domain name disputes; conducting intellectual property due diligence in connection with corporate transactions; analyzing implications of utilizing open source software components in connection with proprietary code
  • Data Security and Privacy: counseling and advice on local, national and international privacy and data protection laws, including compliance with the EU General Data Protection Regulation, certification to the U.S. Department of Commerce's Privacy Shield (and alternative compliance mechanisms), and working with local counsel in relevant jurisdictions for local compliance
  • General Compliance and Corporate Governance: conducting regulatory compliance gap analyses, advising clients and drafting compliance policies related to data security and privacy, call recording programs, robocalling programs, texting and faxing campaigns

Credentials

Education
  • Alfred University, B.S., Ceramic Engineering
  • University of New Hampshire School of Law, J.D.
Bar Admissions/Licenses
  • Massachusetts
Court Admissions
  • U.S. District Court for the District of Massachusetts
  • All State Courts in Massachusetts
  • All State Courts in New Hampshire
  • U.S. Patent and Trademark Office
Memberships
  • Boston Bar Association
  • Massachusetts Bar Association
Honors & Awards
  • Rising Star, Massachusetts Super Lawyers magazine, 2013-2016
  • Rx for Excellence Award, Massachusetts Medical Law Report, 2011
  • Holland & Knight Public and Charitable Service All-Star Award, 2016-2019
  • Holland & Knight Pro Bono All-Star, 2020

Publications

Speaking Engagements

News