Scott M. Kareff’s 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; open source software and data security issues; transitional services agreements and other ancillary agreements; negotiation of IP and technology licenses and IT agreements, including software and outsourcing 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 data scrapping and online privacy issues.

Publications

“US Supreme Court: Licensor Can’t Revoke a Trademark License in Bankruptcy,” SRZ Alert, May 23, 2019 (co-author)

Private Equity Funds: Formation and Operation (Practising Law Institute), 2018-2019 (contributor)

“Cancellation of REDSKINS Trademark Registrations Highlights Distinction Between Registration and Use,” SRZ Alert, June 23, 2014

“IP and IT Issues in M&A Deals,” SRZ White Paper, November 2013 (co-author)

“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 Alert, June 19, 2006 (co-author)

“New .EU Domain Name,” SRZ 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 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 Alert, March 2002 (co-author)

“Playing the Name Game,” SRZ Alert, November 2001 (co-author)

“Internet Land Rush: Stake Your Claim to .biz and .info Domain Names,” SRZ 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

Speaking Engagements

The Legal Aid Society 2016 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, February 2016

The Legal Aid Society 2015 CLE Pro Bono Training Series: Advising Micro-Entrepreneurs, New York, January 2015

“Executing Successful IP and IT Strategies in Connection with M&A,” DealFlow Media IP Investment Conference, New York, June 2014

Bank of America Merrill Lynch Prime Broker Services Group Information Security Conference, New York, September 2013

“Executing Successful IP and IT Strategies in Connection with M&A,” iGlobal Forum Mergers & Acquisitions Investing Summit, New York, February 2013

“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

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) 

Distinctions

  • New York Super Lawyers

Prior Experience

  • Dorsey & Whitney, 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