Erica L. Han

Counsel

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  • JD (Intellectual Property), magna cum laude, Boston University School of Law, 2005; Boston University Law Review
  • MS (Mass Communication), Boston University College of Communication, 2005
  • BA (Communications (major), German (minor)), summa cum laude, Boston College, 2002; Phi Beta Kappa, Departmental Honors

Qualifications

  • Massachusetts, 2005
  • Intellectual Property Section Co-Chair, Boston Bar Association (2016-2018)
  • Boston Bar Association (Steering Committee Member 2014-2015 and 2012-2013; IP Law Committee Co-Chair 2010-2012)
  • WTR1000 (2017)

Erica L. Han

Counsel

Erica Han is a counsel in the firm’s intellectual property transactions practice group. Erica advises consumer branded product companies in relation to global brand strategy, trademark clearance and prosecution, advertising clearance, and resolution of intellectual property disputes. She also represents a wide range of clients in a variety of transactions involving corporate and intellectual property matters, including licensing and collaboration agreements, mergers and acquisitions, supply and distribution agreements, sponsorship and co-promotion arrangements, and other strategic commercial agreements.

Erica rejoined Ropes & Gray in 2014. Prior to rejoining the firm, Erica served as senior intellectual property counsel at a leading global sports apparel and equipment company. 

Experience

  • Represented Webster Capital in connection with its acquisition of a stake in Lifestyle Brands, LLC, the apparel and consumer products division of Margaritaville.
  • Represented Reebok International Ltd. in its sales of The Rockport Company and Mitchell & Ness.
  • Represented a global information technology company on intellectual property issues related to the international separation of the company into two separate businesses. Counseled on the creation and structure of a trademark holding company for brands important to both businesses, drafted template licenses and commercial agreements for both businesses post-split, and provided advice on intellectual property strategy and enforcement processes post-split.
  • Represented Reebok International Ltd. in its exclusive outfitter and apparel deal with UFC.
  • Provided regular counsel to consumer branded product companies, financial institutions, and non-profit organizations on global trademark matters including clearance, prosecution strategy, and infringement claims.
  • Represented an advertising agency on corporate and commercial matters, including legal review and clearance of advertising materials, negotiation of talent agreements, and legal structure of contests and promotions.
  • Represented a global clothing company in connection with a stock purchase, trademark license, and license and sponsorship agreement related to the roll-out of a new product division.
  • Represented a leading food and beverage company in connection with the acquisition of a wholesale beverage business subsequent to a retail spin-off.
  • Counseled a medical publisher on potential privacy and defamation issues, and in the negotiation of a publishing agreement for online medical articles.
  • Represented a major technology company in connection with a complex, multi-national technology collaboration in the digital advertising space.

Publications

  • Co-author, “Fashion Industry Practice Guide,” Lexis Practice Advisor (November 2017) 
  • Co-author, “Copyright Makes Varsity,” Intellectual Property Magazine (May 2017)
  • Co-author, “The International Comparative Legal Guide to Trade Marks 2016,” International Comparative Legal Guides (May 2016)
  • Barking Up the Wrong Channel: An Analysis of Communication Law Problems Through the Lens of Media Concentration Rules.  85 Boston U. L. Rev. 553 (2005)

Presentations

  • Presenter, “Trademark Basics,” Boston Bar Association (May 2016)
  • Guest Lecturer, “IP Management,” UNH School of Law (March 2016)
  • Presenter, “Trademark Year in Review,” Boston Bar Association IP Year in Review (January 2016)
  • Presenter, “Supreme Court IP Roundup,” Boston Bar Association (May 2015)
  • Presenter, “Intellectual Property Basics Workshop:  Responding to an Office Action,” Boston Bar Association (April 2015)
  • Presenter, “IP and Social Media,” MCLE Intellectual Property BasicsPlus! (November 2012 and October 2014)
  • Presenter, “Intellectual Property Basics Workshop: Filing and Prosecution a Federal Trademark Application,” Boston Bar Association (April 2014)
  • Presenter, “Intellectual Property Basics Workshop: Trademark Clearance,” Boston Bar Association (September 2013)
  • Presenter, “Copyright Year in Review,” Boston Bar Association (January 2009 and January 2010)
  • Panelist, Franklin Pierce IP Symposium (April 2009)
  • Presenter, “Trademark Fraud after Medinol,” Boston Bar Association (December 2008)