Attorneys
Attorneys

Peter T. Berk

Member

Practice Focus

Professional Experience

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

Cases / Matters

Intellectual Property:

  • Currently representing technology company in claim for wrongful appropriation of intellectual property by larger corporate entity.
  • Obtained return of domain names containing trademarks of a display manufacturer from various former affiliates and others.
  • Advised, investigated and assisted in remedying cybersquatting claims against competitors, aggregators and former affiliates for trade show company.
  • Represented textile manufacturers in trademark and false advertising litigation against a competitor.
  • Represented 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.).

Social Media:

  • Advised medical practice regarding effective and efficient responses to negative on-line reviews and proactive actions to protect brand reputation.
  • Drafted social media policies for numerous clients including manufacturing companies and nationally recognized physician practices.
  • Assisted corporate client in removing violent video recorded in client’s business from Facebook and social media sites.
  • Assisted physician in investigating, identifying and bringing suit against anonymous poster for defamatory on-line postings.
  • Advised and assisted various clients regarding negative and infringing posts on social media and the web.

Data Privacy:

  • Advised well-known medical group regarding data breach.
  • Advised multi-location regional medical practice regarding PHI breach.
  • Assiste4d in developing data privacy program and policy for marketing company.
  • Draft new, and re-draft existing, data, technology, document retention and other policies as well as website and app terms of use and privacy policies for various clients including medical practices, on-line businesses, manufacturing companies, and accounting and consulting firms.
  • Specific experience with HIPAA and California laws.

Defamation:

  • Currently representing physician in defamation case against a competitor and defending against counterclaim.
  • Represented a large corporation in a defamation claim against a newspaper and others.
  • Represented an on-line 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.

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.

General Litigation:

  • Currently representing trustee of estate in litigation brought by heir for breach of fiduciary duty.
  • Defended member in LLC in lawsuit over ownership and control of medical technology company.
  • Represented foreign technology refurbisher in action brought by supplier over unpaid invoices.
  • Defended emergency physician in lawsuit seeking a TRO and injunction based on an alleged breach of a non-compete provision of a contract.
  • Represented majority owner of aviation-related business in breach of fiduciary duty and fraud suit against minority owner.
  • 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 defending the 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 foreign-based email purchasing scheme, and developed and implemented responsive counter-measures.

Education

  • Northwestern University School of Law, J.D., cum laude (1997)
  • University of Michigan, B.A., with high distinction (1994)

State Admissions

  • Illinois

Professional Associations

  • Chicago Bar Association
  • Lake County Bar Association
  • International Trademark Association (INTA)

Publications

  • “New Laws Protect Online Password Privacy,” RBMA Monthly Legal Update, March 2013.
  • “E-discovery Preparation: The Rule 26(f) Conference – Knowledge is Half the Battle,” The SRR Journal, Fall 2008.
  • “Electronic Discovery: Controlling Costs and Mitigating Risks,” McDonald Hopkins Electronic Discovery practice Alert, November 2007.
  • 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.

Presentations

  • Panelist, “Data Security,” CALSMposium, Chicago, Illinois, September 2014.
  • Panelist, “Cloud Computing & Mobile Devices,” The Masters Series for Legal Professionals, Chicago, Illinois, May 2014.
  • Panelist, “Mobile Devices in Litigation,” CALSMposium, Chicago, Illinois, October 2012.
  • Panelist, “Cost effective Management of E-discovery for Small and Midsized Companies,” The Masters Series for Legal Professionals, Chicago, Illinois, May 2011.
  • Panelist, “Is Social Media On Your Mind? The top 5 questions you should be asking,” McDonald Hopkins LLC Webcast, April 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.

Awards and Honors

  • Selected for inclusion in Illinois Super Lawyers (2013, 2014)
  • Selected for inclusion in Illinois Rising Stars (2012)
Phone
312-642-4168
FAX
312-280-8232
Locations
  • 300 N. LaSalle Street
    Suite 2100
    Chicago, IL 60654