Sarah E. Smith

Partner

Sarah is the co-leader of NGE’s data privacy and information governance practice. Drawing on her knowledge of domestic and international data protection laws, regulations and best practices, Sarah regularly advises clients on a wide range of data privacy and information governance matters. She routinely works with clients to assess proposed data uses, develop privacy-related policies, and negotiate data-driven agreements. Sarah also helps clients navigate their compliance obligations under an ever-expanding set of domestic and international laws and regulations, including with regard to marketing, vendor management, data processing agreements, cross-border transfers, data localization, and data breach response.

She also counsels clients in building information governance programs. Seeking first to understand their business needs and vision, Sarah advises clients on developing data maps, information governance policies, acceptable use policies, information security policies, privacy policies and data breach response plans. In the event of a security incident, Sarah works with clients through all phases of investigation, remediation, and notification under applicable laws and regulations.

Sarah’s practice also features deep experience representing clients in developing, protecting and leveraging the value of their intellectual property rights. She has extensive experience advising clients with respect to a wide expanse of trademark, trade dress, copyright, domain name and unfair competition matters. Sarah is highly skilled with respect to sophisticated intellectual property licensing and procurement relationships, and has specialized experience in all manner of IP-driven agreements in the restaurant, hotel and hospitality space, including complex licensing arrangements, management agreements, brand and marketing license agreements, and naming rights agreements. She also has substantial experience in global strategic trademark portfolio management, including all aspects of clearance, prosecution and enforcement both in the United States and around the world.

Sarah was a founding member of the NGE Women’s Network and its leadership team. She also is active in the firm’s recruiting efforts and serves on NGE’s Hiring Committee. She is a member of the International Association of Privacy Professionals and also has served on the Data Protection Best Practices Subcommittee of the Data Protection Committee for the International Trademark Association (INTA), as well as on the Internet Governance and Contractual Relationships Subcommittee and the Registration Practice & DNS Administration Subcommittee of the INTA’s Internet Committee. Sarah was named an Emerging Lawyer by Law Bulletin Publishing Company in 2015, a designation earned by fewer than 2 percent of all attorneys in the state.

Transactions and Counseling

  • Regularly negotiate management agreements, brand and marketing license agreements, and naming rights agreements for several prominent hotel groups.
  • Designed and implemented accessory licensing program for a well-known manufacturer in the telecommunications and consumer electronics space.
  • Negotiate licensing and procurement agreements for a well-known consumer electronics brand.
  • Strategic management of global trademark portfolios for clients including a consumer electronics brand spanning hundreds of domestic and foreign registrations in more than 70 countries.
  • Monitored hundreds of registered domain names for a well-known consumer electronics brand, and assisted in enforcement of brand owner’s rights through appropriate legal mechanisms, including ICANN dispute processes.

Litigation and Enforcement

  • Successfully represented nationally-recognized real estate investment trust against copyright infringement claims in the electronic newsletter context.
  • SBE Licensing, LLC v. Hyde Bar Milwaukee LLC, Barclay Standard LLC, and Robert F. Smith (E.D. WI) – Obtained permanent injunction on behalf of SBE preventing defendants from using one of the client’s renowned nightlife brands.
  • AOL Inc. v. Advertise.com (E.D. Va. and C.D. Cal.) – Obtained a preliminary injunction on behalf of AOL based on significant confusion affecting one of the client’s leading brands.
  • ProvoTowneCentre Online aka Steven Rasmussen v. General Growth Properties, Inc. and Provo Mall, L.L.C. (D. Utah and 10th Circuit) – Obtained summary judgment and permanent injunction preventing use of one of GGP’s brands and ordering transfer of the corresponding domain name registration.
  • Nielsen Media Research v. Eagle Creek Broadcasting (S.D. Tex.) – Defeated preliminary injunction and established the right to de-list TV stations from Nielsen ratings book.

Bar Admissions

  • Illinois

Court Admissions

  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Central District of Illinois
  • U.S. Court of Appeals for the Tenth Circuit