Peter T. Berk

Peter is a litigator with in-depth experience representing individuals, business and corporate plaintiffs and defendants in intellectual property, internet and technology issues, and other civil matters. He has specific expertise in electronic discovery, trademarks, defamation, and internet and technology related investigations.

Intellectual Property:

• Currently representing textile manufacturers in trademark and false advertising litigation against a competitor
• Currently representing an organization in copyright infringement case against a competitor for infringement of a copyright of a website
• Represented a publicly traded company in a trade dress infringement suit against a large competitor
• Advised decorating company regarding proper use of trademarks in distributor websites, marketing pieces, and giveaways
• Represented a communications company in the negotiation for transfer of a domain name utilizing the client’s trademark
• Advised numerous clients regarding the propriety of the use of proposed marks
• Represented an exclusive importer of fine pianos against a company falsely claiming to sell its brands and using the company’s trademarks.
• Lead attorney in charge of representing a trademark holder in a federal trademark infringement suit.
• Assisted a public corporation in securing control of more than 55 domain names based on the company’s trademarks that a dismissed IT Director had stolen from the company and assisted in instituting safeguards to prevent such occurrences in the future.
• Represented a retail client in protecting its trademarks and brands by assisting it in the acquisition of more than 15 domain names held by cybersquatters advertising competitor stores.
• Represented a technology company in a UDRP proceeding alleging cybersquatting against a competitor related to three domain names.
• Represented student tour company in a federal Lanham Act and cybersquatting suit against a long time competitor. Educational Tours, Inc. v.Hemisphere Travel, 2004 WL 887417 (N.D. Ill.)

Class Actions:

• Represented a former President and CEO of a publicly traded corporation in a shareholder class action following a failed merger with an internet company and eventual bankruptcy.
• Assisted in representing a large life insurance company in numerous state and federal market practice class actions.
• Represented a large computer software manufacturer in a consumer fraud class action.

Defamation:

• Represented a large corporation in a defamation claim against a newspaper and others.
• Represented an online publication and its reporter in defamation suits and in response to discovery requests, and performed prepublication screenings.
• Defended a blogger in a defamation suit over an article related to a contested political race.

General Litigation:

• Represented a large foreign supplier and its United States subsidiary in an arbitration brought by its customer for breach of contract.
• Represented a client in a breach of contract dispute with the former owners of an acquired company.
• Member of the litigation team that achieved a JMOL ruling overturning a jury verdict on RICO and other claims filed against the defendants and defendingthe ruling on appeal. Perlman v. Zell 185 F.3d 850 (7th Cir. 1999).

Internet/Technology Investigations:

• Assisted in the internal investigation of a paperless company related to potential malpractice and regulatory claims, and coordinated the collection and protection of all electronic information.
• Conducted an investigation on behalf of a public technology sector company in relation to a foreignbased email purchasing scheme, and developed and implemented responsive countermeasures.

• Chicago Bar Association
• American Bar Association
• International Trademark Association (INTA)
• The Sedona Conference Working Group on Electronic Document Retention and Production (Member)

• "New Laws Protect Online Password Privacy," RBMA Monthly Legal Update Digest March 2013.
• "Electronic Discovery: Controlling Costs and Mitigating Risks," McDonald Hopkins Electronic Discovery practice Alert, November 2007.
• "E-discovery Preparation: The Rule 26(f) Conference – Knowledge is Half the Battle," The SRR Journal, Fall 2008.
• Co-author, "Understanding Liability Issues for Streaming Media and VOIP," Streamingmedia.com, March 2006.
• Co-author, "Beware Your Potential Liability for Postings," Computerworld.com, February 2006.
• Co-author, "What Every Website Owner Should Consider: A Legal Check Up," Tech. Execs. Club, January 2005.
• Co-author, "Anonymity, Immunity and On Line Defamation: Managing Corporate Exposures to Reputation Injury," 4 Sedona Conference J. 97, Fall 2003 (Recipient of the Burton Award for Legal Writing).
• Co-author, "Consumer Fraud Act Class Actions in State Court," ALI-ABA Insurance Litigation Seminar, Washington D.C., May 2002.
• Co-author, "Class Certification Issues for Non-Federal Question Class Actions-Defense Perspective," 2001 Practicing Law.

• "Is Social Media On Your Mind? The top 5 questions you should be asking," McDonald Hopkins LLC Webcast, April 2011.
• Panelist, "Cost effective Management of E-discovery for Small and Midsized Companies," The Masters Series for Legal Professionals, Chicago, Illinois, 2011.
• Presenter, "Federal Rule of Evidence 502: Protecting the Privilege," Lake County Bar Association Civil Trial and Appeal Committee Seminar, May 2009.
• Presenter, "E-discovery 102: Beyond the Basics," Lake County Bar Association Civil Trial and Appeal Committee Seminar, May 2008.
• Presenter, "Electronic Discovery and Document Retention," Illinois CPA Society, April 2006.
• Panelist, "Document Retention and Destruction," LORMAN Education Services, January 2006.

• Selected for inclusion in Illinois Super Lawyers (2013)
• Selected for inclusion in Illinois Rising Stars (2012)