James G. Gatto

Jim Gatto is a partner in the Intellectual Property Practice Group in the firm's Washington, D.C. office. He is Leader of the Blockchain Technology and Digital Assets Team and Social Media and Games Team. He is also Leader of the firm's Open Source Team.

Areas of Practice

Jim 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.

Jim advises clients of all sizes (startups 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 regularly advises 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.

Jim's practice is national and international and 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.

Honors

Cryptocurrency, Blockchain and Fintech Trailblazer, The National Law Journal, 2018

Thought Leader on Blockchain & Cryptocurrencies, National Law Review, 2018

Top Rated Lawyer, Martindale-Hubbell AV Preeminent

Regional Legal Leader, DC/Metro, The National Law Journal, 2018

Media, Technology and Telecoms, Legal 500, 2016

IP Stars, Managing Intellectual Property, 2013-2014, 2018-2019

Intellectual Property - Northern Virginia, Chambers USA, 2007-2019

Patent Licensing & Transactional and Patent Prosecution, Legal 500, 2007-2015

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 for Author of the Year, Intellectual Property USA, 2010

Super Lawyers, 2006-2008, 2010-2014, 2017-2020

Top IP/IT Attorneys in Virginia, Virginia Business Journal Survey

DC Area's Go-To Attorneys, Washington SmartCEO

Digital Media

Cannabis Webinar Wednesday: Blockchain and Cannabis - Weeding Through the Hype

Nota Bene Episode 58: The Advantages of Using Cryptocurrencies and Other Blockchain Technologies for Business Growth with James Gatto

Nota Bene Episode 35: Implementing Blockchain Technology to Improve Operations with James Gatto

Note Bene Episode 3: Implementing Blockchain Technology to Improve Operations with James Gatto

Insights

Articles

•A Blow To Crypto Miners Disputing Local Energy Rates
Law360, 04.10.2020
•Blockchain Tech has Numerous Applications for Defense
National Defense, 12.2019
•Understanding Bitcoin and Virtual Currency
Lexis Practice Advisor, 12.06.2019
•Gambling Laws Have Changed A Lot In The Past Year. Here’s How.
PlayUSA, 04.17.2019
•Not Every Open Source Cloud Has A Silver Lining
Law360, 03.01.2019
•INSIGHT: Interstate Online Gambling Dealt Blow by DOJ Flip Flop on Wire Act
Bloomberg, 02.14.2019
•Considering Blockchain In The Electricity Industry
Law360, 11.07.2018
•10 Lessons On Blockchain And Open-Source Licenses
Law360, 11.01.2018
•Insight: How Blockchain Can Affect Health Care
Bloomberg Law, 06.06.2018
•Open Source Software in M&A and Finance Transactions
Thomson Reuters, 06.05.2018
•Patent Issues with Open Source Software (OSS)
Thomson Reuters, 06.05.2018
•Open Source and SaaS
Thomson Reuters, 06.05.2018
•Considerations for Developing Corporate Open Source Policies
Thomson Reuters, 06.05.2018
•Potential Repercussions of the Big Fish Decision
Casino Journal, 05.29.2018
•Virtual Advertising: Uncharted Legal Waters
Advertising Age, 11.11.2016
•Alternative Fantasy Models Face Legal Scrutiny
Law360, 10.31.2016
•Federal Circuit Is In Sync With Patent’s Validity Under Section 101
IPFrontline, 09.21.2016
• Hospitality's Move to Mobile Raises Legal Risks
HOTELS Magazine, 09.13.2016
•2 Courts Dismiss Class Actions Involving Virtual Casinos
Law360, 12.01.2015
• FTC Issues New Guidance for Mobile App Developers that Collect Location Data, JD Supra, February 2, 2015
• Not So Silky Road, JD Supra, February 5, 2015
• FinCEN Addresses Illegal Sports Betting, JD Supra, January 28, 2015
• Court Finds Poker Game Management Patents Valid Under Section 101, JD Supra, November 17, 2014
• Another Court Declares Terms of Service Provisions Unenforceable - Are Yours? JD Supra, November 6, 2014
• IRS Issues Significant Convertible Virtual Currency Ruling - Bitcoin Community Abuzz, JD Supra, March 28, 2014
• More Fallout From Silk Road, JD Supra, January 28, 2014
• Sacramento Kings Announce They Will Be The First Pro Sports Franchise to Accept Bitcoin, JD Supra, January 20, 2014
• Taxation of Virtual Currencies, JD Supra, January 14, 2014
• Does Bitcoin Violate the Stamp Payments Act? JD Supra, January 10, 2014
• Healthcare Gamification - Regulation of Wellness Programs, JD Supra, August 28, 2013
• FINCEN Virtual Currency Guidance, JD Supra, July 5, 2013
• Money Laundering Through Virtual Currency Provider Shut Down, JD Supra, May 29, 2013
• FINRA Levies $9 Million Fine Against Financial Service Company Over Email Failures, JD Supra, May 22, 2013
• Bitcoin Exchange Assets Seized, JD Supra, May 20, 2013
• DMCA Saves YouTube...Again, JD Supra, April 19, 2013
• Mobile Payments Infographic, JD Supra, April 17, 2013
• SEC OKs Social Media Sites for Financial Disclosures, JD Supra, April 3, 2013
• FINCEN Issues Virtual Currency Regulations, JD Supra, March 22, 2013
• Who Wants Money for Mobile App Development? JD Supra, February 4, 2013
• Social Media Guidance for Financial Institutions, JD Supra, January 30, 2013
• Will Australia Ban Non-Real Money Gambling Apps? JD Supra, January 15, 2013
• Virtual Goods, Gaming and the Trouble With Secondary Markets, JD Supra, January 2013
• Make Sure Your Virtual Currency Doesn't Enter Illegal Gambling Territory, Paybefore Magazine, Fall 2012

Books

• Blockchain: A Prescription for Curing Ailments in the Healthcare Industry, Health Law Handbook 2019 Edition, Thomson Reuters, 2019
•Advisory Panel, Blockchain, Virtual Currencies and ICOs - Navigating the Legal Landscape, Wolters Kluwer, 2018

Class Action Defense Strategy Blog Posts

• The Game Goes On: Sheppard Mullin Obtains Dismissal With Prejudi