Troy K. Lieberman - IP Litigation and Data Privacy - Nixon Peabody LLP

Troy K. Lieberman



Troy Lieberman is a litigator and the deputy leader of the firm’s Data Privacy & Cybersecurity practice. His practice focuses on representing clients in intellectual property, advertising, technology, privacy, data security, and other complex disputes in courts, arbitration proceedings, and regulatory bodies across the country. He is also the co-leader of the firm’s Telephone Consumer Protection Act (TCPA) team and has defended dozens of class and individual actions under the statute.

Troy also counsels clients on a range of privacy and data security issues, including compliance with the patchwork of laws and regulations and data breach preparedness and response. He is a Certified Information Privacy Professional (CIPP/US) through the International Association of Privacy Professionals (IAPP).

Prior to law school, Troy was a consultant with IBM, focusing on business process improvement projects for clients, including the United States Navy.

What do you focus on?

Intellectual Property & Technology Litigation

I represent companies in patent, trademark, copyright, trade secret, and false advertising litigation in federal courts across the country. I am currently defending a leading mobile game developer against claims of copyright infringement relating to digital car designs.

I also represent clients in other complex technology litigation, including disputes involving software development, software implementation, data backup and recovery services, licensing, and various Internet- and mobile-related issues. I recently defended a software implementer against claims of breach of contract, fraud, and negligence stemming from an enterprise-wide software implementation project for an online retailer.

Privacy, Data Security, & Consumer Protection

I represent companies in individual and class-action litigation stemming from privacy, data security, and marketing disputes, including following data breaches and under statutes such as the TCPA, Fair Credit Reporting Act (FCRA), Computer Fraud and Abuse Act (CFAA), and state consumer protection laws. I recently defeated a motion for class certification and obtained summary judgment on behalf of a medical device company accused of violating the TCPA.

I also advise companies on proactive compliance with the myriad of international, federal, and state data privacy laws and regulations, data breach preparedness and response, and marketing and advertising. I counsel clients on novel and complex issues relating to data collection, retention, security, and use, including under the California Consumer Privacy Act (CCPA), EU General Data Protection Regulation (GDPR), and TCPA.

What do you see on the horizon?

How companies collect, handle, and use customer information is being increasingly scrutinized. Recently enacted laws such as the GDPR and CCPA create significant compliance requirements for companies, and potential exposure is large. Older laws and regulations also require ongoing assessment in light of new and developing technologies. The uncapped statutory damages available under the TCPA have made it a favorite of class action plaintiffs’ lawyers. All consumer-facing businesses must be aware of the statute and evolving regulations to ensure compliance.

Representative Matters

Intellectual Property & Technology-Related Litigation

  • Currently defending Gameloft, a leading mobile game developer, against allegations of copyright infringement and unfair competition relating to digital car designs used in mobile application games. Glass Egg v. Gameloft et al. (N.D. Cal.)
  • Represented DJO, a leading medical device company, in a trade secret misappropriation and breach of contract action involving a former employee. The case resolved by stipulation with entrance of permanent injunctions. DJO, LLC v. Bedford et al. (N.D. Tex.)
  • Defended Junction Solutions against allegations of breach of contract, fraud, and negligence stemming from the implementation of enterprise-wide software at an online retailer. Obtained partial summary judgment and settled the remaining claims on the eve of trial. Team Express v. Junction Solutions et al. (W.D. Tex.)
  • Defended Neff, an active headwear and apparel brand, against allegations by Oakley of trade dress infringement regarding sunglass design. The case settled after we filed an early summary judgment motion. Oakley, Inc. v. Neff, LLC (S.D. Cal.)
  • Defended IDentrix, a developer of security software, against trademark infringement allegations involving “Identix” and “Identrix” registered marks. The case settled. MorphoTrust USA, LLC v. IDentrix, LLC et al. (D. Mass.)
  • Defended the AGR Companies, related energy marketing providers, against allegations of copyright infringement, trade secret misappropriation, and unfair and deceptive practices relating to use of call center software. The case settled. Noble Systems v. AGR Field Services, et al. (M.D. Fla.)
  • Defended Viacom and Pilgrim Studios, among others, against claims of patent infringement, fraud, and conspiracy relating to motorcycle technology. Obtained dismissal of all claims. Tavantzis v. Orange County Choppers, et al. (M.D. Fla.)
  • Represented Sony Corporation in many Trademark and Trial Appeal Board (TTAB) proceedings, successfully opposing trademark registration applications and cancelling trademark registrations

Privacy, Data Security, TCPA & Consumer Protection

  • Defended Boston Scientific, a leading medical device manufacturer, in a putative class action alleging violations of the TCPA, relating to educational health care seminar calls. Defeated motion for class certification and obtained summary judgment on individual claims for complete dismissal of the dispute. Sandoe v. Boston Scientific Corp. (D. Mass.)
  • Defended LabCorp, a clinical laboratory, in a putative class action alleging violations of the TCPA. Successfully bifurcated discovery to focus on issues of individual plaintiff’s claims and adequacy as class representative. The case settled prior to class-wide discovery. Cunningham v. Laboratory Corporation of America Holdings (M.D.N.C.)
  • Defended NiSource in related putative class actions alleging violations of the Massachusetts Credit Cost Disclosure Act, federal Truth-In-Lending Act (TILA), and unfair and deceptive practices related to its water heater leasing program. Obtained summary judgment on all claims in state action (affirmed by Massachusetts Court of Appeals) and obtained dismissal of all claims in the federal action (affirmed by the First Circuit). Saia v. Bay State Gas Company (Mass. Sup. Ct.) and Philibotte v. NiSource Inc. et al. (D. Mass.)
  • Defending Planet Fitness against allegations of invasion of privacy, civil rights violations, and consumer protection claims relating to its inclusive locker room policies. Obtained dismissal of all claims. Cormier v. Pla-Fit Franchise, LLC et al. (Mich.)
  • Advised a financial institution in its investigation and response to a security incident arising from a phishing scam and defended client against pre-suit claims by data controller for breach of contract and negligence
  • Represented a marketing company in an investigation by the Indiana attorney general’s office into the client’s telemarketing practices
  • Currently advising a leading international retailer on compliance with the California Consumer Protection Act
  • Advised a professional sports organization on compliance with the GDPR and various federal and state data privacy security laws and regulations
  • Advised a publicly traded health plan provider on compliance with the TCPA and other laws and regulations regarding communications with, and marketing to, consumers by telephone, text message, fax, and e-mail
  • Led investigation on behalf of a software provider into unauthorized access of the company’s systems, including pursuing claims under the CFAA in federal court to identify the former employee responsible. The dispute resolved favorably (S.D. Ga.)

Representative Speaking Engagements

  • “Intellectual Property Rights,” Institute for Biomedical Entrepreneurship, Cambridge, MA, November 13, 2019
  • “What Businesses Need to Know About the TCPA in 2019,” Nixon Peabody webinar, March 7, 2019
  • “Data Security and Privacy in Financial Services,” TerraLex Global Meeting, Boston, MA, Oct. 4, 2018 (moderator)
  • “Cybersecurity: How Much Is Too Much,” MIT CFO Summit, Newton, MA, Nov. 16, 2017 (moderator)
  • “Avoiding Legal Pitfalls When Marketing Your Business,” CIC f/k/a Cambridge Innovation Center, Cambridge, MA, May 30, 2017
  • “TCPA Outlook,” International Association of Privacy Professionals (IAPP) Global Privacy Summit, Washington, DC, April 19, 2017
  • “TCPA Compliance,” Danal TCPA Compliance and Identity Summit, Sunnyvale, CA, Feb. 21, 2017
  • “TCPA Panel,” New York State Bar Association Public Utility Committee, Albany, NY, Nov. 10, 2016
  • “Trade Secrets 101,” LaunchPad Huntington, Huntington, NY, April 2, 2014

The Once-and-Future Privacy Shield

Rochester Business Journal | November 06, 2020

Data Privacy & Cybersecurity deputy leader and Rochester associate Jenny Holmes contributed this article analyzing the European Court of Justice’s recent invalidation of the Privacy Shield and its impact on data flows between the US and the EU. This article was co-developed with Los Angeles partner Jason P. Gonzalez and Boston associate Troy K. Lieberman, both from the Data Privacy & Cybersecurity team.

'Not a black-and-white issue:' Legal, business implications of facial recognition tech

Boston Business Journal | July 30, 2020

Boston Intellectual Property associate and deputy leader of the Data Privacy & Cybersecurity practice group Troy Lieberman was featured in a Q&A for his outlook on facial recognition technologies in light of Boston Mayor Martin Walsh recently signing into law a ban on government use of these technologies in the city.

Unwanted pre-recorded calls don’t violate TCPA

Massachusetts Lawyers Weekly | January 23, 2020

This article mentions Manchester Complex Commercial Disputes partner Dan Deane and Boston Complex Commercial Disputes associate Troy Lieberman, who earned a favorable ruling on behalf of defendant Boston Scientific in a class action suit alleging violations of the Telephone Consumer Protection Act.

Boston Scientific asks judge to toss robocall suit

Law360 | July 12, 2019

This article highlights Boston Intellectual Property associate Troy Lieberman, who is representing Boston Scientific in a proposed class action suit alleging violations of the Telephone Consumer Protection Act.

High court may upend TCPA litigation landscape

Law360 | November 13, 2018

Boston Intellectual Property associate Troy Lieberman is quoted in this article looking at possible FCC changes to the definition of “autodialer” in regard to the Telephone Consumer Protection Act.

DC Circuit Delivers Relief, but Not Clarity, with TCPA Ruling

Law360 | March 15, 2018

Boston IP litigation associate Troy Lieberman is quoted in this article explaining how the DC Circuit Court’s ruling on the FCC’s telemarketing rules will provide some relief for businesses.

Contact

Troy K. Lieberman

Associate
Deputy Leader, Data Privacy & Cybersecurity Practice Group

Boston

Phone: 617-345-1281


Fax: 855-451-6601

University of Virginia School of Law, J.D.

Colby College, B.A.

Massachusetts

U.S. District Court, District of Massachusetts

U.S. Court of Appeals, First Circuit

U.S. Court of Appeals, Second Circuit

U.S. Court of Appeals, Federal Circuit

  • Greater Boston Chamber of Commerce: Boston’s Future Leaders (2016)
  • Recommended in The Legal 500 United States 2016 editorial for Intellectual property—Trade secrets

Troy is a member of the Leadership Council for Year Up Boston. Year Up’s mission is to close the opportunity divide by providing urban young adults with the skills, experience, and support that will empower them to reach their potential through professional careers and higher education.

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