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919 Third Avenue
New York, New York 10022
United States of America
P: +1 212.756.2132
E:
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Scott M. Kareff is a special counsel in the New York office. His transactional experience includes intellectual property and information technology work in connection with mergers and acquisitions and commercial lending transactions, including due diligence and negotiation of IP and IT provisions; transitional services agreements and other ancillary agreements; negotiation of IP and technology licenses and IT agreements, including software and outsourcing agreements; Internet and e-commerce agreements, including strategic alliance, website hosting, development, user and linking agreements; and the acquisition of Internet website domain names and other assets. In the areas of counseling and prosecution, he has represented clients on trademark, copyright and right of publicity enforcement matters; domain name infringement and ICANN dispute resolution; trademark clearance; trademark and copyright prosecution; and sweepstakes and online privacy issues.
Selected Publications
“Hedge Fund Names: What a Hedge Fund Manager Should Do Before It Starts Using a Name,” The Hedge Fund Law Report, March 16, 2012 (co-author)
“Court's Ruling Denying Trademark Challenge Has Implications for Hedge Fund Industry,” SRZ Client Alert, June 19, 2006 (co-author)
“New .EU Domain Name,” SRZ Client Alert, November 2005 (co-author)
“KP Permanent Make-Up, Inc. V. Lasting Impression I, Inc.: Supreme Court Resolves Circuit Split On Fair Use Defendant's Burden,” SRZ Client Alert, December 2004 (co-author)
“Getting the Biggest Bang for Your Trademark Buck: The Madrid Protocol,” Intellectual Property Developments, March 2004 (co-author)
“.us Domain Name Now Available,” SRZ Client Alert, March 2002 (co-author)
“Playing the Name Game,” SRZ Client Alert, November 2001 (co-author)
“Internet Land Rush: Stake Your Claim to .biz and .info Domain Names,” SRZ Client Alert, June 2001 (co-author)
“Dilution Comes to the TTAB and Other Recent Changes in Trademark Practice,” Dorsey & Whitney Intellectual Property Bulletin, September 1999 (co-author)
“Tetra Park International SA v. Commission (Tetra Park II): The European Approach to Monopoly Leveraging,” Law and Policy in International Business, Vol. 28, No. 2, Winter 1997
More
Selected Speaking Engagements
“Running a Multi-Jurisdictional Adviser,” SRZ 20th Annual Private Investment Funds Seminar, New York, January 2011
“Making Your Mark: Trademark Selection, Clearance and Registration,” SRZ Intellectual Property and Information Technology for Investment Funds Seminar, New York, June 2003
More
Memberships
International Trademark Association (INTA)
Member, INTA Editorial Board, The Trademark Reporter,
2002–03 and 2004–05
Member, INTA Bulletin, Articles Committee, Feature Articles,
2006–07
ABA Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on Taxation, Bankruptcy and Security Interests
Chair, 2011-2012
ABA Section of Intellectual Property Law, Division IV (Specialized IP Issues), Special Committee on IP Security Interests
Vice Chair, 2010-2011
Volunteer Lawyers for the Arts (pro bono legal representation and counseling)
Lawyer’s Committee for Human Rights (pro bono legal representation in
political asylum cases)
Bar Admissions
Court Admissions
- U.S. District Court, Southern District of New York
- U.S. District Court, Eastern District of New York
- State of New York
Education
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Georgetown University Law Center, J.D./M.S.F.S., magna cum laude, 1994
- Order of the Coif
- Associate Editor, Georgetown Law Journal, 1992-94
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Cornell University, B.A., with distinction, 1990
Prior Experience
Dorsey & Whitney LLP, associate, 1997–2000
Simpson Thacher & Bartlett, associate,1994–97
European Court of Justice, Luxembourg City, Luxembourg
Dean Acheson Legal Stagiaire (law clerk) to Advocate General of Spain, Fall 1996
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