Liisa M. Thomas, Partner

Liisa Thomas has developed a unique advertising practice, providing privacy law counseling to major consumer brands, advertising agencies, and consumer research companies, among others. Ms. Thomas joined Winston & Strawn in 2005 as a partner, bringing to the advertising law group her extensive experience in privacy, trademark, and youth marketing laws. Ms. Thomas has been a frequent and popular author on the subject of advertising and privacy laws, and is an adjunct professor in The John Marshall Law School’s Information Technology LLM program.

Ms. Thomas assists her clients with privacy compliance and data security issues, and helps coordinate national and worldwide clearances of interactive advertising programs, including advising clients on compliance with e-mail, fax, direct mail, and data breach notification laws. She also helps clients with the acquisition, commercialization, and enforcement of their intellectual property rights.

Ms. Thomas began her career at a prestigious trademark litigation boutique firm, designing and implementing brand protection strategies. While at the firm, she handled the trademark opposition portfolio for a major consumer electronics manufacturer. During her career, Ms. Thomas also managed online intellectual property infringement issues for a company that sold popular children’s toys. It was her work enforcing the intellectual property rights of this toy manufacturer that led her into youth marketing and privacy law, assisting that company comply with emerging online privacy laws intended to protect children.

Activities

Ms. Thomas is recognized as a leader in her industry. Her practice has been listed for the last two years in Legal 500 directory, she is included in Madison Who’s Who, and her practice was featured in Crain’s Chicago Business. Ms. Thomas serves as chair of the board for the American Bar Association’s Annual Review of Intellectual Property Law Developments. She is also a member of the Advertising Compliance Service Editorial Advisory Board and serves on the editorial advisory board for the Privacy & Data Security Law Journal, which is published monthly by Sheshunoff Information Services. In addition, Ms. Thomas is active in the International Trademark Association as a member of the features subcommittee of the INTA Bulletin committee, and serves on the International Association of Privacy Professional’s Education Advisory Board. She is also secretary of the board of Illinois Legal Aid Online, a member of the board of the Women’s Foodservice Forum, and governing member of the Chicago Symphony Orchestra.

Ms. Thomas is a member of the Diversity Committee and the Hiring Committee at Winston & Strawn as well as several groups that focus on improving the diversity of the legal community, including the Black Women’s Lawyer’s Association.

Education

Speeches and Publications

Ms. Thomas has spoken and written extensively on the convergence of advertising and privacy law, and has chaired marketing and privacy conferences throughout the United States. Some of her speeches and articles include presentations in 2008 at the ABA’s Annual Meeting and American Conference Institute’s E-Commerce Summit on text message and mobile marketing laws, and presentations about data breach notification and protection requirements for Practising Law Institute’s conference on Privacy and Security Laws. Ms. Thomas also recently published articles in the INTA Bulletin on the trademark doctrine of foreign equivalents and on slogan marks; in 2007 published a series in Advertising Compliance Service on interactive advertising laws; and in 2005 appeared on a Cable Access Network program entitled “You and the Law: Online Privacy,” put on by the Chicago Bar Association.

Ms. Thomas’ other speeches include:

• “Balancing Technology And Privacy Emerging Rules In Online Behavioral Advertising, Mobile Marketing, Social Networking And Other Electronic Commercial Communication,” Presentation at PLI’s Eleventh Annual Institute on Privacy and Data Security Law, Chicago (July 2010)
• “What Advertisers and Their Promotion/Ad Agencies Need to Know About Data Security and Document Retention,” Presentation for eLunch series, Winston & Strawn LLP (April 16, 2010)
• “Perfectionner vos connaissances en vous informant sur les développements récents en droit de la publicité aux Etats-Unis,” Presentation at Canadian Institute’s Droit de la publicité et du marketing, Montreal (March 25-26, 2010)
• “What Companies Need To Know Now About Social Networking, Privacy Protection, and the Latest Legal & Regulatory Developments,” Webinar for ABA-IPL’s Landslide Teleconference Series, American Bar Association (February 25, 2010)
• “New FTC Guides on Online Activities as Advertising,” Speech presented at the CBA Cyberlaw Monthly Meeting, Chicago Bar Association Cyberlaw Committee, Chicago (January 19, 2010)
• “Trademark Licensing,” Speech presented at Understanding the Intellectual Property License 2009, Practicing Law Institute, Chicago (November 5, 2009)
• “Targeted and Behavioral Advertising: What Every Company Needs to Know,” Speaker at IAPP KnowledgeNET, International Association of Privacy Professionals, Chicago (October 29, 2009)
• “Working with CARU: The Anatomy of a CARU Case,” Panel participant at 2009 CARU Annual Conference, Children's Advertising Review Unit, New York (October 7, 2009)
• “Blogomania: User Generated Content and the New Media Revolution,” Speech presented at the ABA Annual Meeting, American Bar Association. Chicago (August 2, 2009)
• “Legal Issues Surrounding Minors’ Online Activities,” Panelist on presentation at the 6th Annual E-Commerce Best Practices Conference, Stanford Law School Center for Internet and Society, Stanford, CA (June 12, 2009)
• “Privacy Concerns in Marketing and Commercial Communications,” Presentation at PLI’s Tenth Annual Institute on Privacy and Data Security Law, San Francisco and Chicago (June 2, 2009)
• “Blogging, Buzz and Tweets: How to Get People to Talk About Your Products Legally,” eLunch presentation Winston & Strawn LLP (May 6, 2009)
• “Property Rights in Web 2.0: What Are the Legal Rules Regarding YouTube, MySpace, Social Networking, User-Generated Content and Virtual Worlds,” Speech presented at ABA Litigation Section Annual CLE Meeting, American Bar Association, Atlanta (April 30, 2009)  
• “It’s a bold new virtual world out there, should we be worried?” Speech presented to ABA IPL Section Spring CLE Meeting. American Bar Association, Washington D.C. (April 4, 2009)
• “Mobile Devices as Information Systems,” Speech presented at PLI’s Web 2.0 and the Future of Mobile Computing: Privacy, Blogs, Data Breaches and Portable Information Systems Conference. Practising Law Institute, New York City (March 5, 2009) and San Francisco (April 2, 2009)
• “Trademark Licensing,” Speech presented at PLI’s Understanding the Intellectual Property License, Practicing Law Institute, Chicago (October 20, 2008)
• “Children’s Food & Beverage Advertising Self-Regulation: A Global View,” Panel moderator at NARC and CBB’s CARU Annual Conference 2008, New York (September 24, 2008)
• “The Laws of Mobile Marketing and Text Messaging,” eLunch presentation, Winston & Strawn LLP (August 27, 2008)
• “Text and Mobile Marketing in a Wireless World,” speech presented at American Bar Association’s Annual Meeting 2008, The Hilton Hotel, New York City (August 8, 2008)
• “The Emerging Law of Data Security: From Corporate Obligations to Provide Security to Breach Notification Requirements,” speech presented at Ninth Annual Institute on Privacy and Security Law, Chicago (July 21, 2008). Written materials published in Vol. 1, pp. 357-372 (2008)
• “Monitoring the Rollout of an E-Mail Marketing Campaign in Compliance With Multiple, Ever Changing (and Sometimes Conflicting) State, Federal and International Laws,” speech presented at ACI's E-Commerce Summit, Hotel 480, San Francisco (April 23, 2008)
• “Ensuring Privacy and Safety in an Environment Where ‘Don’t Talk to Strangers’ Doesn’t Cut It Anymore,” and “Sifting through the Mobile Marketing Confusion – Complying with the Laws in the Absence of a Gold Standard (or any Standard at All),” panel moderator and participant at ACI Regulatory Kid Watch Conference, Washington, D.C. (April 1-2, 2008)
• “Behavioral Advertising Roundtable,” moderator at ABA IPL Section’s Special Committee on Promotions and Marketing Law roundtable series, Winston & Strawn, Los Angeles, Chicago, and New York (February 29, March 6, and March 24, 2008)
• “Trademark and Copyright Licensing,” Understanding the Intellectual Property License 2007, Practising Law Institute, Chicago (October 15, 2007)
• “Complying With State and Federal Privacy Requirements in Promotional Activities,” ACI’s Sweepstakes, Contests & Promotions Conference, New York (October 10, 2007)
• “The Child Audience: Food, Phones & the Net,” What’s New in Comparative Advertising, Claim Support and Self-Regulation conference, the National Advertising Division, New York (September 24-25, 2007)
• “Corporate Counsel Roundtable: Hot Topics in Advertising and Promotions Law,” program chair, ABA’s Minority Counsel Program Fall 2007 Meeting, American Bar Association, Chicago (September 6, 2007)
• “Complying with the 50 States, Including California!” ACI’s National Corporate Counsel Forum on Advertising Law, American Conference Institute, Las Vegas (June 5, 2007)
• “Walk a Mile in the Regulator's Shoes: An Advertising Compliance Treasure Hunt,” workshop, ACI’s National Corporate Counsel Forum on Advertising Law, American Conference Institute, Las Vegas (June 4, 2007)
• “BE VERY AFRAID...What to Know When Targeting Brands to Children,” ACI's 2nd Annual Maximizing Branded Entertainment Deals, American Conference Institute, New York (March 27, 2007)
• “Incorporating FCC Regulatory Concerns into Wireless Marketing Campaigns,” ACI Corporate Counsel Forum on E-Marketing and Privacy Law, American Conference Institute, Las Vegas (March 19, 2007)
• Roundtable moderator, “Gift Card Laws: Moving Towards National Regulation?” ABA IP Law Section Brown Bag Lunch Series, ABA IP Law Section Special Committee on Promotion and Marketing Law, New York, Chicago, and San Francisco (March 1, 6, and 22, 2007)
• Panelist, “Complying with the 50 States, Including California,” 18th National Advanced Corporate Counsel Forum on Advertising Law, American Conference Institute, New York City (December 6, 2006)
• “Walk a Mile in the Regulators’ Shoes – A Holiday Advertising Treasure Hunt,” pre-conference workshop at the 18th National Advanced Corporate Counsel Forum on Advertising Law, American Conference Institute, New York City (December 4, 2006)
• “Privacy Matters: Building Trust with Your Consumers,” The Let's Find Out ‘06 Symposium: Portrait of Today's Family, C&R Research, Chicago (October 5, 2006)
• “Data Breaches: Notification Requirements and Security Enforcement,” ACI's Legal and Operational Forum on Preventing and Responding to Security Breaches, American Conference Institute, New York (September 28, 2006)
• Panelist, “The Ads Are On...  Do You Know Where Your Children Are? Advertising and Marketing to Children,” Advanced Corporate Counsel Forum on Advertising Law, American Conference Institute, Chicago (June 22, 2006)
• “Shaping the Future for the Advertising World: Must Enter to Win,” pre-conference workshop at the Advanced Corporate Council Forum on Advertising Law, American Conference Institute, Chicago (June 20, 2006)
• “Recent Issues in Interactive Advertising and Privacy,” Recent Developments in Advertising, Promotions, and Privacy Law, Dallas (April 5, 2006)
• “Walking the Interactive Advertising Tightrope: Recent Developments in Privacy Laws,” Hot Issues in Technology, the Internet, and e-Commerce, Winston & Strawn, Palo Alto and San Francisco (March 28-29, 2006)
• “Key Issues in Advertising Over the Internet,” Advertising and Marketing Law, InSight Information, Chicago (March 20, 2006)  
• Panel discussion, “Parody and Fair Use: Be Amusing and Not Confusing,” the Minority Corporate Counsel Association's 5th Annual CLE Expo (March 2006)
• “Top Privacy Risks for 2005,” IAPP/TRUSTe KnowledgeNet, Chicago (February 9, 2005)
• Panel discussion, “Marketing Privacy: Reconciling Email, Do Not Fax and Consumer Expectations," International Association of Privacy Professionals, Privacy and Data Security Academy and Expo, New Orleans (October 27–29, 2004)
• “Online Compliance Issues for Higher Education Institutions,” Association for Communications Technology Professionals in Higher Education, ACUTA 33rd Annual Conference & Exhibition, Chicago (August 5, 2004)
• “Protect the Popular: Brand Protection Strategies for Youth Marketers,”  Institute for International Research, Youth Marketing Mega Event 2004, Anaheim (June 28, 2004)
• “Kids and Online Privacy: Navigating the COPPA Regulations with Style,” Marketing Research Association, Marketing Research Association Annual Conference & Symposium, Boston (June 10, 2004)
• “Your Name Is Your Power: Brand Building Strategies for the New Millennium,” KidPower XChange, Teen Power Winter Conference, Las Vegas (December 3, 2003)
• “Spam: Legal Compliance Issues,” IAPP Privacy and Data Security Academy and Expo, Chicago (October 29, 2003)
• “Building Brand Strength in the Mom Market,” MomPower Conference, KidPower XChange, Chicago (October 27, 2003)
• “Owning Your Research and Your Product Packaging Design,” Institute for International Research, Market Research and Package Design, Chicago (October 9, 2003)
• “FTC Enforcement of Privacy and Security Promises,” presented with Dean Forbes of the FTC at Barnett International, Privacy Compliance for Pharmaceutical Marketing, Sales & Commercial Operations, Philadelphia (September 24, 2003)
• “Using Teen Talent to Promote Your Brand,” 7th Annual KidPower/TeenPower 2003, Chicago (September 17, 2003)
• “Building Your Brand: Incentives and the Youth Market,” Institute for International Research, Youth Marketing Mega-Event, Anaheim (June 24, 2003)
• “Online Privacy Issues,” Old Dominion Bar Association 63rd Annual Convention, Alexandria, VA (June 7, 2003)
• “The Power of Interactive Promotions,” KidPower XChange, KidPower 2003 Annual Conference, Orlando (May 8, 2003)
• Panelist, “New Trends in Web-Based Communications,” National Education Writers Association, EWA Annual Meeting, Chicago (April 25, 2003)
• “Developing Effective Internal Privacy Practices to Avoid FTC and State Enforcement Actions,” The Real Enforcement Threat: FTC Enforcement in the Health Care Industry, Health Information Privacy Alert Teleconference (April 2, 2003)
• “Children’s Online Privacy Protection Act and Other Laws Designed to Protect Children in the Online Environment," Loyola University School of Law, Childlaw Center’s Coffee Talk, Chicago (March 19, 2003)
• Panelist, “Legal Considerations in E-Mail Marketing: What You Don't Know Could Hurt You,” Technology Executives Club, Legal Issues in E-Business and Technology Special Interest Group, Chicago (February 5, 2003)
• “How Brand Protection Strategies Can Help Increase Profits,” The Design Alliance, a division of the Institute for International Research, Brand Masters: A Practitioner's Forum, Coconut Grove (December 13, 2002)
• “The Aging Up Dilemma: How to Create an Interactive Community for Tweens,” KidPower XChange, Teen Power 2002 Conference,  Phoenix (November 8, 2002)
• “Capture the Power of the Internet in a COPPA World,” KidPower XChange, Teen Power 2002 Conference, Chicago (September 25, 2002)
• Panelist, “E-mail Marketing and Spam,” The John Marshall Law School 2002 Reunion CLE Seminar, Chicago (September 14, 2002)
• “Easy Steps for Making ‘No’ a ‘Yes:’ How to Get Your Marketing Plan Approved by Legal,” KidPower XChange, Kid Power 2002 Conference, Orlando (May 7, 2002)
• “Who Cares About COPPA? Legal Advertising to the Teen and Tween Market,” KidPower XChange, Teen Power 2001 Conference, Chicago (December 5, 2001)
• Roundtable co-host, "COPPA Compliance," KidPower XChange, eKidPower Summer Conference 2001, Chicago (July 16, 2001)
• “Children’s Online Privacy, What Do the Kids Think?,” KidPower Xchange, eKidPower Summer Conference 2001, Chicago (July 16, 2001)
• Workshop Leader, “Providing a Safe Online Environment for Kids,” KidPower XChange, KidPower 2001 Spring Conference, Florida (May 7, 2001)
• “Walking the Legal Tightrope: Marketing to Kids Within the Bounds of the Law,” Institute for International Research, 13th Annual Consumer Kids Conference, Florida (May 1, 2001)
• “A Click of Her Own: Personalization and Privacy for Women on the Web,” Institute for International Research, Marketing to Women on the Web Conference, New York (February 15, 2001)
• “Digital Kids: A Rational Approach to Creating a Child-Friendly Web Environment,” Fulcrum Information Services, Inc., The 7th Annual Aggressive Advertising and the Law Forum, New York (February 13, 2001)
• “Privacy Rules of the Road: Creating a Good Privacy Practice,” Personalize or Perish Conference, Institute for International Research, San Francisco (October 23, 2000)
• “Kids and Online Privacy: Navigating the New COPPA Regulations with Style,” 12th Annual Consumer Kids Conference, Institute for International Research, Palm Beach (May 16, 2000)
• “Safe Harbors, Seals, and Wizards: Who Will Really Help?” “Online Privacy for Kids–Are You Ready?” Institute for International Research, New York (April 18, 2000)
• “Cyberspace Issues for Advertising Professionals,” Ad Club of South Bend Monthly Meeting, Indiana (October 14, 1999)
• “Trademark Conflicts on the Internet,” DePaul College of Law, Cyberspace Technology: Exploring Intellectual Property's Next Frontier, Inaugural Summit,  (September 29, 1999)

Ms. Thomas’ publications include:

• “Five Steps to Protect Your Trademark in the Web 2.0 World,” INTA Bulletin, Vol. 65, No. 10 (May 15, 2010)
• “Blogomania and the New Media Revolution,” The Practical Lawyer, ALI-ABA, Vol. 56, No. 1, p. 19 (February 2010)
• “Social Networking and Blogging: the New Legal Frontier,” The John Marshall Law School Review of Intellectual Property Law, John Marshall Law School. 9 J. Marshall Rev. Intell. Prop. L. 500 (Fall 2009)
• “Endorsement Guide Revisions’ Impact on Blogging,” Advertising Compliance Service, JLCom Publishing Co. LLC., Volume XXIX, Issue 22, p. 3, (November 16, 2009)
• “Children’s Privacy Law—New Developments, Including Maine,” Handout materials for PMA Annual Law Conference, Promotion Marketing Association, Chicago (November 5-6, 2009)
• “COPPA Settlement for Improper Age Screening Results in $250,000 Civil Penalty,” Advertising Compliance Service, JLCom Publishing Co., LLC. Vol. XXIX, Issue 21, p. 3 (November 2, 2009)
• “New developments in children’s privacy law, including Maine,” World Data Protection Report, BNA International, Inc. Vol 9, No. 10, p. 4 (October 2009)
• “Privacy Issues for Mobile Devices,” The Secure Times, American Bar Association Antitrust Section., Vol. 4, No. 2 (Fall 2009)
• “Where Have You Been? The Rules for Online Behavioral Advertising,” Privacy & Data Security Journal, an AS Pratt & Sons publication, Sheshunoff Information Services Inc., Vol. 4, No. 9 (September 2009)
• “New Maine Law Will Apply to Information of Kids Under 18,” Advertising Compliance Service, JLCom Publishing Co., LLC. Vol. XXIX, Issue 16, p. 2 (August 17, 2009)
• “Mobile Devices as Information Systems,” The Computer & Internet Lawyer, Aspen Publishers. Vol. 28, No. 8 (August 2009)
• “The Role of Disclaimers in Avoiding Trademark Infringement,” co-author, INTA Bulletin (March 2009)
• “When Are Slogans Trademarks, and Who Owns Them?” INTA Bulletin, Vol. 63, No. 14, p. 7 (August 1, 2008)
• “Lessons Learned in Interactive Advertising: Text Message Ads,” Advertising Compliance Service, Volume XXVII; Issue 6 (March 19, 2007)
• “Lessons Learned in Interactive Advertising: Telephone Ads,” Advertising Compliance Service, Volume XXVII; Issue 5 (March 5, 2007)
• “Lessons Learned in Interactive Advertising: Fax Advertisements,” Advertising Compliance Service Volume XXVII, Issue 4 (February 19, 2007)
• “Lessons Learned in Interactive Advertising: E-Mail Advertising,” Advertising Compliance Service Volume XXVII, Issue 3 (February 5, 2007)
• “Responsible Interactive Advertising and Children: Understanding and Complying With COPPA and the CARU Guidelines,” The Metropolitan Corporate Counsel (January 2007)
• “Privacy Lessons Learned in 2006,” PMA Law Conference 2006 Law Forms and Guide, Promotions Marketing Association (December 2006)
• How to Comply with the Children’s Online Privacy Protection Act and Avoid Penalties, Aspatore Inc. and Research and Markets (May 2006 [released October 5, 2006])
• Chapter author, “Navigating the Advertising Law Landscape: Communication, Promotion, Advertising Clearance, Trademark, Unfair Competition, False and Deceptive Advertising Laws, and You,” The Laws Behind Advertising, Leading Lawyers on Advising Clients, Understanding the Law, and Building a Strong Campaign, (Aspatore Inc., 2006)
• “Avoiding Identity Crisis,” Marketing Management, Vol. 13, No. 3. American Marketing Association (May/June 2004)
• “How CAN-SPAM Will Impact Us This Year,” Privacy Officers Advisor, Vol. 4, No. 5 International Association of Privacy Professionals (February 2004)
• “Best Used by Expiration Date, Issue Gift Cards at Your Own Risk,” Marketing Management, Vol. 13, No. 1, American Marketing Association (January/February 2004)
• “The Death of Fax Advertisements?,” BNA’s Privacy & Security Law Report, August 18, 2003, Vol. 2, No. 33
• “Legal Considerations for Online Advertising to Children,” International Journal of Marketing and Advertising to Children,  Vol. 3, Issue 4, September 2, 2002
• “Walking the Legal Tightrope: Marketing to Kids within the Bounds of the Law,” Institute for International Research, Spotlight Article, 13th Annual Consumer Kids Conference Newsletter, (Winter 2000/2001)
• “Protecting Intellectual Property Online,” Cyber Strategies: At the Frontier of Law and Business, CCH Incorporated, Vol. 2, No. 2 (Summer 2000)
• “Online Advertising to Children,” E-Commerce Law, April, 2002