Mark J. Diliberti

Mark J. Diliberti is a partner and intellectual property lawyer with Foley & Lardner LLP, based in the firm’s Milwaukee office, where he is a co-chair of the firm’s Copyright & Advertising Practice which has been recognized as a national Tier 1 practice by U.S. News – Best Lawyers “Best Law Firms” (2013 – 2017), Chambers USA (2013 – 2014) and by The Legal 500 (2015 – 2017). The firm’s practice was also ranked by Managing Intellectual Property Magazine in the areas of contentious practice and prosecution (2015) and by the World Trademark Review “WTR 1000” directory for its trademark enforcement and litigation capabilities (2014 – 2015).

Mark counsels clients on all aspects of intellectual property including trademarks, copyrights, licensing, enforcement, litigation and advertising. 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 also has substantial experience with protecting unique and distinctive features of products (such as color and shape) as trade dress and copyrights.

Recognition

• Recognized as a leader in the field of trademark law by World Trademark Review in its “WTR 1000 – The World’s Leading Trademark Professionals” directory (2021)
• Recognized by The Legal 500 in the field of:
  • Trademarks, non-contentious (2012 – 2014, 2016 – 2017)
  • Marketing and advertising (2016 – 2017)
• Recognized as a “Leading Lawyer in IP” by M: Milwaukee’s Lifestyle Magazine (2013 – 2014)
• Selected for inclusion to the Wisconsin Super Lawyers – Rising Stars® list (2006 – 2007)
• Received, Foley’s Intellectual Property Department Founder’s Award which recognized his service to clients, his colleagues and firm (2006)
• Served on the firm’s national recruiting committee where he led the intellectual property recruiting efforts for the Milwaukee office (2002 – 2004)
• Served on the firm’s national associate’s committee for several years

Publications and Presentations

Mark is a contributing author for the World Copyright Report and has been published in the ABA IPL Newsletter and others including:

• 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)
• 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)
• 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)
• Presenter, "BOSE: A Wave of Relief for Trademark Practitioners?," IP Section of the Milwaukee Bar Association (October 2009)
• Author, "Which Type of IP Protection Is Right for Your Medical Device?," MX Magazine (April 2009)
• Author, "Colorful Rights: Trademark Protection for Color Schemes," Legal News Alerts: Sports (December 2008)
• Author, "IP Protection Menu for Medical Devices," Legal News: Medical Devices (November 2008)
• Author, "First Sale Doctrine Protects Sale of ‘Promotional Use Only’ CDs," World Media Law Report (September 2008)
• Author, "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)
• Presenter, "Metro-Goldwyn-Meyer Studios v. Grokster Ltd.: The Balance Between Copyright and Innovation" (July 2005)
• "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)
• Presenter, "Developing & Defending Color Marks" (June 2003)
• Presenter, "Copyright Law and Misappropriation Doctrine," State Bar of Wisconsin (March and June 2001)
• Napster case summary, IPL Newsletter (Spring 2001)

Affiliations and Professional Memberships

• Member, International Trademark Association
• Member, Milwaukee Bar Association
• Board member, Milwaukee Repertory Theater (2012 – 2015)
• Member, Milwaukee’s East Town Association/Music

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.

Education

• University of Chicago Law School (J.D., with honors, 1998)
  • Member, Phi Beta Kappa
• Marquette University (B.A., summa cum laude, 1995)
  • Major: English and philosophy

Admissions

• Wisconsin