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Spotlight
    Social Media & Games Law Blog

    Professionals

    James G. Gatto

    James G. Gatto
    Partner

    T: +1.703.770.7754 F: +1.703.770.7901
    Email  |  Download vCard  | 

    Jim Gatto created and is the leader of the law firm's Social Media & Games team and leader of the Open Source team. He leverages his unique combination of nearly 30 years of IP experience, business insights and attention to technology trends to help companies develop IP and other legal strategies that are aligned with their business objectives. His practice focuses on all aspects of intellectual property, internet and technology law, including patent, trademark, copyright, trade secret and open source. Mr. Gatto advises clients of all sizes (start-ups to Fortune 100 companies) on key legal and business issues relating to the use of social media, video games, social games and online gambling (gamblification), virtual goods and currency, social networks, virtual worlds, mirror worlds, augmented reality, open source user-generated content, location-based services and gamification.

    He has extensive experience advising internet and social media companies on business and legal strategies relating to virtual goods and virtual currency, developing IP protection and monetization strategies, handling terms of service and end user license agreements, development, licensing and partnership agreements, developing DMCA policies, handling DMCA enforcement, privacy and COPPA policies and much more.

    Mr. Gatto has been in the intellectual property field since 1984, when he started as a Patent Examiner while attending Georgetown University Law School at night. Prior to joining our firm, Mr. Gatto headed the local IP practice for Mintz Levin's Reston and Washington offices, and was co-chair of the firm-wide IP Section. Prior to that, he co-founded and co-headed the National Patent Practice and Northern Virginia Technology Practice for Hunton & Williams, the then largest Virginia-based law firm.

    Mr. Gatto's practice is national and international, and it encompasses a full range of IP and technology issues, including: patent, trademark, copyright and trade secret litigation; counseling and technology transactions; developing and implementing IP strategies to protect and to monetize IP assets; creating and implementing corporate IP programs; conducting IP audits; conducting complex patent prosecution, including patent appeals, interferences, Inter Partes Review (IPRs), reissues and protests; handling patent enforcement issues, including licensing and litigation; negotiating and drafting technology agreements; conducting IP due diligence in and negotiating IP aspects of mergers, acquisitions and financings; rendering opinions concerning the infringement, validity and enforceability of patents; handling trademark prosecution, domain name, copyright and trade secret matters; handling IP aspects of employment issues; advising clients on legal issues associated with open source software including open source patent issues, licensing, open source compatibility issues, indemnity issues and developing and implementing corporate policies on use of open source software; advising clients on the legality of cutting edge Internet business methods and technology; and advising clients on computer law issues such as computer fraud and abuse and SPAM-related issues.

    Over the years he has had leading roles in a number of national and local legal and technology-related industry organizations. Mr. Gatto is frequently invited to speak at leading business and legal conferences in the U.S. and internationally. Mr. Gatto mentors many start-ups, directly and through some leading accelerators such as Founders Institute, Yetizen and Northern VA Tech Council’s FastTrac. He is a regular contributor to SocialGamesLaw.com, Pillsbury's blog that addresses business and legal issues that affect social media applications, technologies and business models. He has also appeared as a featured guest on Bloomberg television and the Fox Business Network.

    Honors & Awards
    • Chambers USA, Intellectual Property—Northern Virginia (2007-2014)
    • Legal 500 US, Patent Licensing & Transactional and Patent Prosecution (2007-2014)
    • IAM Strategy 250, Intellectual Asset Management Magazine (2011)
    • Greater Washington Legal Elite, SmartCEO Magazine (2010)
    • Best Intellectual Property Author, Lexology Legal Writing Awards—US (2010)
    • Legal Writing Awards Winner 2010 for Author of the Year, Intellectual Property USA
    • Top IP/IT Attorneys in Virginia, Virginia Business Journal Survey
    • DC Area's Go-To Attorneys, Washington SmartCEO
    • Managing Intellectual Property, IP Stars (2013-2014)
    • Martindale-Hubbell, AV® Rated
    • Super Lawyers (2006-2008, 2010-2014)
    Affiliations

    American Bar Association—Vice-Chair, Section of Science & Technology Law, Virtual Worlds and Multi-User Online Games; Patent, Trademark and Copyright Committee;  Section of Intellectual Property Law—Special Committee on Computer Gaming

    International Technology Law Association—Chair, Social Media & Games Committee

    Association of Virtual Worlds—Advisory Board Member; Chair of Legal Committee

    American Intellectual Property Law Association—Chair, Open Source Subcommittee; Electronic and Computer Law Committee; Patent Law Committee; Emerging Technology Committee

    District of Columbia Bar—Arts, Entertainment, Media & Sports Law Section

    Patent Lawyers Club of Washington (Past President)

    Intellectual Property Owners (IPO)—Open Source Committee

    He has been a member of the Board of Trustees and Secretary of the Software Patent Institute; served as Chair of the Patent, Trademark & Copyright Section of the Young Lawyers Division of the ABA; was President of the Patent Lawyers Club of Washington; was a member of the Board of Governors of the Patent and Trademark Office Society; served as an adjunct professor for several years teaching a legal strategy course in Johns Hopkins MBA program.

    Courts

    U.S. Court of Appeals for the Federal Circuit and the Court of Federal Claims, U.S. District Court for the District of Columbia

    Representative Speaking Engagements
    • Speaker, “Gamblification,” Game Business and Legal Affairs 2014, 19-May-2014
    • Speaker, “The Interface Evolves – Sensory Gaming Platforms,” NeuroGaming 2014 Conference & Expo, 7-May-2014
    • Speaker, “New Ideas in Bitcoin,” Inside Bitcoins, 7-April-2014
    • Speaker, “Gamblification! Interaction between Social Games and Online Gambling,” Social Gambling & Gaming Summit, 10-December-2013
    • "Gamblification: Gaming and Gambling Partnerships," Gamer Technology Law Conference, 7-October-2013
    • Speaker, “Know When to Hold ‘Em,” PLI’s Technology and Entertainment Convergence 2013: Hot Business and Legal Issues in "Technotainment" San Francisco, 18-September-2013 and New York, 3-October-2013
    • "Discussion of Due Diligence," Panel Discussion, The Power of Angel Investing Seminar, Northern Virginia Technology Council; Ashburn, VA, 11-July-2013
    • Speaker, gsummitX - Gamification in Washington, DC, 5-June-2013
    • Moderator, “Gamblification! Interaction between Social Games and Online Gambling,” American Bar Association Forum on the Entertainment & Sports Industries, 10-June-2013
    • Speaker, Social Media & Games Committee meeting and interactive workshop, 2013 World Technology Law Conference & Annual Meeting, 3-May-2013
    • Moderator, “The Next Interface – Sensory Gaming Platforms,” NeuroGaming Conference & Expo, 1-May-2013
    • Speaker, “Clarifying the blurred legal boundaries between various forms of social, virtual currency, prediction, sweeptstakes and other forms of gaming – what you can and can’t do,” Social Casino Summit San Francisco 2013, April-25-2013
    • Speaker, "Gamblification: Legal Concerns," GSummit San Francisco 2013, 18-April-2013
    • Speaker, "Rigging the Mobile Game Deck," Casino Gaming, 26-February-2013
    • Speaker, “Viva Las Vegas - Monetization 3.0: Opportunities in Online Casinos and Gambling for Games and Media Companies," Games Summit at 2013 International CES, 10-January-2013
    • "Role of Patents in Business and the Impact of the America Invents Act," Practising Law Institute Law Audio Webcast, 5-November-2012
    • “Gamblification! Legal Issues Relating to the use of Gambling Mechanics for Non-Gambling Purposes”, 2012 ITechLaw European Conference, 11-October-2012
    • Moderator, "Can Social Games be Monetised through Gambling", Social Gaming and Virtual Goods World, 7-December-2011
    • "Obeying the Law in a Virtual World", Social Gaming and Virtual Goods World, 6-December-2011
    • "Not Just Fun and Games: The Legal and Privacy Implications of Virtual Currency", Pillsbury webinar, 24-October-2011
    • "Derivative works based on open source", AIPLA Annual Meeting with Joint Committee Meeting ECLC and Diversity in IP Law, 21-October-2011
    • "Mobile and Handheld Device Gaming: Regulatory Update for Location-Based Gaming", LSI Gamer Technology Law Conference, 3-October-2011
    • "Top 10 Social Media Legal Issues: What Every Lawyer Should Know", MCLE Marathon, 27-September-2011
    • "Social Media for Nonprofits & Associations", WMACCA Nonprofit Series, 26-May-2011
    • "Social Media for Nonprofits: Leveraging the Opportunities and Avoiding the Legal Pitfalls", The Kreeger Museum, 14-April-2011
    • Webinar: "Top Social Media Legal Issues", 22-March-2011
    • "Legal Issues in Gamification", Engage! Expo New York, 15-February-2011
    • Webinar: "Social Media & Location-based Services: New Risks", 2-February-2011
    • "Top Legal Issues in Gamification", The Gamification Summit, 19-January-2011
    • "Overview of Legal Issues with Virtual Currencies", Virtual Goods World – Europe, 16-November-2010
    • "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies", Engage! Expo California, 22-September-2010
    • "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies", PLI Technology and Entertainment Convergence 2010: Hot Business and Legal Issues in "Technotainment", San Francisco, 22-September-2010
    • "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies", PLI Technology and Entertainment Convergence 2010: Hot Business and Legal Issues in "Technotainment", New York, 10-September-2010
    • "Virtual Worlds in Government Contracting", Pillsbury's Northern Virginia office, 8-June-2010
    • "ABCs of Social Gaming", Pillsbury's Silicon Valley office, 1-June-2010
    • "Top Legal and Business Issues with Virtual Worlds", Engage Expo New York, 16-February -2010
    • "Top Legal and Business Issues with Virtual Worlds", Engage Expo California, 23-September-2009
    • "Intersecting Interests: Virtual Worlds and the Law", Metanomics stage in Second Life, 20-May-2009
    • "What Actual Companies Need to Know About Virtual Worlds", Pillsbury MCLE Marathon, Houston, 18-May-2009
    • "Virtual Worlds", 2009 ITechLaw Annual Meeting, Seattle, 14-May-2009
    • "Overview of Business and Legal Issues with Virtual Worlds" - presenter, Pillsbury Northern Virginia, 12-May-2009
    • "What Actual Companies Need to Know About Virtual Worlds", Pillsbury MCLE Marathon, Northern Virginia, 28-April -2009
    • "What Actual Companies Need to Know About Virtual Worlds", Pillsbury MCLE Marathon, New York City, 19-Feb -2009
    • "Do You Truly Own What You Are Licensing? What Every Licensor and Licensee Needs to Know About Open Source Code", Advanced Forum on Technology Licensing Agreements, ACI, 29-Apr-2008
    • "Business Aspect of Patents: A Primer for the Non-Patent Lawyer" - Presenter, CLE Marathon hosted by Pillsbury; New York, NY, 10-Apr-2008
    • “Overlooked Intellectual Property Issues: Avoiding Pitfalls that Impact Commercialization”, USIC (United States Industry Coalition); Arlington, VA, 05-Mar-2008
    • “Significant Recent Events in the Open Source World”, Open Source Seminar hosted by Pillsbury; McLean, VA, 10-Jan-2008
    • “Essentials of Patent Law for General Litigators”, CLE event hosted by Pillsbury; New York, NY, 05-Nov-2007
    • "Navigating The New Patent World And Understanding USPTO Proposed Reforms," Panel Discussion, Patent Strategies Conference: Implementing Successful Approaches to IP Protection While Maximizing Business Value, IQPC; New York, NY, 26-Sep-2007
    • “GPLv3 Has Been Released - Do You Know How the Significant Changes Will Impact You?”, Presenter, IPC Fall Meeting, AIA (Aerospace Industries Association), Arlington, VA, 25-Sep-2007
    • “GPLv3 Has Been Released – Do You Know How the Significant Changes Will Impact You?”, Open Source Seminar hosted by Pillsbury; McLean, VA, 24-Jul-2007
    • "What Venture Capitalists and Other Investors Look for in IP Portfolios", Technology IP Due Diligence Conference, ACI; San Francisco, CA, 22-Jun-2007
    • "Digital Media Patents for Profit", The Business & Technology Of Online Video, Streaming Media East 2007 Conference & Exhibition; New York, NY, 15-May-2007
    • "Director and Officer Liability for Infringement of Intellectual Property: One More Reason for Effective IP Management" - Presenter, CLE Marathon hosted by Pillsbury; New York, NY, 11-Apr-2007
    • "The Business Case For/Against Using Open Source in Your Portfolio and Your Client’s Processes" - Moderator, Software IP Strategy Summit; ACI; Palo Alto, CA, 21-Feb-2007
    • "Power of Angel Investing" - Panelist, IP Due Diligence; University of Virginia in conjunction with the Virginia Active Angel Network; 09-Oct-2006
    • “GPLv3 – What You Need to Know About the Coming Changes”, Open Source Seminar hosted by Pillsbury; McLean, VA, 07-Sep-2006
    • "Patents and Open Source - The Sky is Not Falling", C3 Expo; New York, NY, June 2006
    • “Recent Developments in Open Source”, Open Source Seminar hosted by Pillsbury; McLean, VA, 06-Apr-2006
    • "Legal Issues in Open Source",- Open Source Licensing: A Doorway to Heaven or Hell?, CLE Spring Training; ACC (Association of Corporate Counsel); San Francisco, CA, 23-Mar-2006
    • "Protection in the World of Open Source: Best Practices for Mergers and Acquisitions in an Open World", Open Bar; Silicon Valley, CA, 02-Jun-2005
    • “Legal Issues and Business Ramifications of Open Source Software”, Breakfast Briefing hosted by Pillsbury Winthrop LLP; McLean, VA, 06-Jan-2005
    • "Legal and Regulatory Aspects of Bioinformatics" – Moderator & Panelist, Infotech Pharma Conference; London, 12-Feb-2002
    • "Legal Aspects of Applying Bioinformatics to Personalized Medicine", BioFuture Conference; Vancouver, Canada, 21-Nov-2002
    • "IP Issues for Nanotech Start-ups", International Conference on Computational Nanoscience and Nanotechnology; San Juan, Puerto Rico, 22-Apr-2002
    • "What Businesses Need to Know About The Value of Patents - a US and Israeli Perspective", Virginia Israel Technology & Trade Summit; Reston, VA, 2001
    • "The Impact of Open Source Software on University IP Revenue", delivered to Board of Directors, Virginia Tech Intellectual Properties, Virginia Polytechnic Institute and State University; Virginia, 28-Jan-2002
    • "Intellectual Property as Collateral in Secured Transactions", Commercializing Intellectual Property Conference, Law Seminars International; Virginia, 29-May-2003
    • "Salvaging Value of IP from Troubled Companies" – Panelist; Business Seminar Co-Hosted By Chevy Chase Bank; Chevy Chase, MD, 15-May-2003
    Admissions
    Commonwealth of Virginia
    District of Columbia
    Registered to practice before the U.S. Patent and Trademark Office
    Education
    J.D., Georgetown University Law Center, 1988
    B.E., Electrical Engineering (with a Physics minor), Manhattan College, 1984

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