Mark J. Diliberti

Mark J. Diliberti is a partner and intellectual property lawyer with Foley & Lardner LLP. Mark counsels clients on all aspects of intellectual property, including trademarks, copyrights, licensing, enforcement, litigation and advertising. He is co-chair of the firm's Trademark, Copyright & Advertising Practice, which has been recognized as a national Tier 1 practice by U.S. News – Best Lawyers® “Best Law Firms” (2013-2017) and Chambers USA (2013-2014), and was recommended by The Legal 500 (2015-2017). The practice also was ranked by Managing Intellectual Property Magazine in the areas of contentious practice and prosecution (2015) and recognized by the World Trademark Review's "WTR 1000" directory for its trademark enforcement and litigation capabilities (2014-2015).

Mark's practice encompasses: strategic brand development, clearance and risk assessment; global portfolio management, enforcement and defense; trademark licensing and related agreements (sponsorship deals, performance contracts, rights agreements); and intellectual property aspects of business transactions such as mergers and acquisitions, financing and joint ventures.

Mark has substantial experience with protecting unique and distinctive features of products (such as color and shape) as trade dress and copyrights. He has also presented on this topic (available at Foley.com).

Recognition

In 2012, 2013, 2014, 2016, and 2017, Mark was recognized by The Legal 500 for his work in trademarks: non-contentious and in 2016 and 2017 was recognized for his work in marketing and advertising. Also in 2013 and 2014, M: Milwaukee's Lifestyle Magazine recognized Mark as a Leading Lawyer in IP. He was selected for inclusion in the 2006 and 2007 lists of Wisconsin Super Lawyers – Rising Stars®. He also received the firm's Intellectual Property Department Founder’s Award in 2006, recognizing his service to clients, his colleagues and the firm.

Mark served on the firm's national recruiting committee from 2002-2014, leading the intellectual property recruiting efforts for the Milwaukee Office. He also served for several years on the firm’s national associate’s committee.

Education

Mark received his J.D., with honors, from the University of Chicago Law School (1998). A Phi Beta Kappa member, he earned his Bachelor of Arts, in English and philosophy, from Marquette University (summa cum laude, 1995).

Affiliations and Professional Memberships

Mark is a member of the International Trademark Association and the Milwaukee Bar Association. He currently serves on the board of the Milwaukee Repertory Theater (2012-15) and of the East Town Association/Music in Milwaukee.

Mark is also a musician, active in the Milwaukee music community and band member in Floor Model, The Riverwest Aces and Bright Lights, Big City.

Thought Leadership

Mark is a leading intellectual property lawyer on M&A and due diligence issues, and is a chapter co-author of the treatise, “Due Diligence for Intellectual Property: Valuing Assets in a Transaction” published in Law Journal Press (2014). He has also been a contributing author for the World Copyright Report and has published in the ABA IPL Newsletter.

Admissions

Mark is admitted to practice in Wisconsin.

Publications and Presentations

• Moderator, “Evolving Faces of Digital Media and Elusive Legal Solutions,” Foley’s 12th Annual IP Conference, September 2016
• Forum co-chair, "Digital Media – The Challenges of Managing Multi-Platform Legal Issues," June 2014 (Conference)
• Contributing author, “Due Diligence for Intellectual Property: Valuing Assets in a Transaction,” Law Journal Press, 2014
• Host and moderator, “Anti-Counterfeiting,” International Trademark Association Roundtable, September 2010 (Presentation)
• Panelist, “Fireside Chat,” panel presentation at “Winning a Game of Inches: Gaining Momentum Through IP,” Foley’s Annual IP Conference, New York, NY, October 2010 (Presentation)
• "BOSE: A Wave of Relief for Trademark Practitioners?," IP Section of the Milwaukee Bar Association, October 2009 (Presentation)
• "Which Type of IP Protection Is Right for Your Medical Device?," MX Magazine, April 2009
• "Colorful Rights: Trademark Protection for Color Schemes," Legal News Alerts: Sports, December 2008
• "IP Protection Menu for Medical Devices," Legal News: Medical Devices, November 2008
• "First Sale Doctrine Protects Sale of ‘Promotional Use Only’ CDs," World Media Law Report, September 2008
• "Copyright Protection Denied to Digital Models Created for Ad Campaign," World Media Law Report, July 2008
• "Court Rejects RIAA's Popular 'Making Available' Argument," World Media Law Report, July 2008
• "StreamCast Ordered to Filter P2P Software But Escapes Being Shut Down," World Copyright Law Report, November 2007
• "Circuits Finally Agree on Scanned Pages of National Geographic CD – ROM," World Copyright Law Report, July 2007
• "Ninth Circuit Rejects Challenge to Copyright Protection for Orphan Works," World Copyright Law Report, March 2007
• "Flea Market's Theory of Secondary Liability Doesn't Fit, So Court Doesn't Buy," World Copyright Law Report, May 2006
• "Supreme Court Leaves Circuits Divided Over National Geographic CD-Rom," World Copyright Law Report, February 2006
• "Safe Harbour Provides a Generous Haven for Software Copied for Maintenance," World Copyright Law Report, October 2005
• "Metro-Goldwyn-Meyer Studios v. Grokster Ltd.: The Balance Between Copyright and Innovation," July 2005 (Presentation)
• "Appeals Court Asks if FCC Broadcast Flag has ‘Crossed the Line’," World Copyright Law Report, April 2005
• "Clash of Industry Giants in Use of Music Games," World Copyright Law Report, July 2004
• "Belated Christmas Present for Fox in Copyright Case," World Copyright Law Report, May 2004
• "Country Singer Gets the Blues Over Allegedly Infringing Photo," World Copyright Law Report, April 2004
• "Developing & Defending Color Marks," June 2003 (Presentation)
• "Copyright Law and Misappropriation Doctrine," State Bar of Wisconsin, March 2001 program on Effectively Advising Your Business Clients and June 2000 Annual Convention (Presentations)
• Napster case summary, IPL Newsletter, Spring 2001