James G. Gatto

Jim Gatto co-heads the firm's Blockchain Technology and Digital Currency team and has been involved with fintech and digital currencies for over 12 years. Jim has advised numerous clients on transactions, regulatory issues, intellectual property issues, open source, and legality of business models with blockchain applications. He has a range of experience with many different types of currencies and blockchain technologies. Some of the applications that he has advised on relate to the use of blockchain for voting systems, trading platforms, EHR and other medical data information, smart contracts, DAO's, micro lending, and escrow systems. He has worked with a number of companies to file patents for these technologies.

Jim has worked with and advised startups, Fortune 100 companies, investors and non-profits such as the Bitcoin Foundation. He has authored numerous publications and blog posts and is a frequent speaker on these topics, including at the World Bank and Ohio State University, among many others. He is also the author of the Lexis Practice Advisor on "Bitcoin Fundamentals" and recently authored the article, "Patent Strategies for Cryptocurrencies and Blockchain Technology."

Jim is a partner in the Intellectual Property Practice Group in the firm's Washington, D.C. office.

Experience

• Represented Catalina Marketing in their acquisition of Modiv The deal involved an acquisition and strategic integration of Modiv’s mobile and digital technology to supplement Catalina’s bricks and mortar-based targeted marketing infrastructure.
• Lead IP/tech attorney for the highly publicized, complex strategic alliance between EMC and Lenovo, relating to network servers and storage devices. The deal included M&A and ongoing strategic business agreement components, involving complex licensing, open source and IP aspects. Based on this deal, M&A Advisor named him a winner of the 2012 “Cross-Border Deal of the Year” in its category for this work.
• Assisted VoiceBox Technologies Corp. by securing dozens of patents to protect its award-winning contextual voice technology. VoiceBox was recently named in the IEEE’s Patent Power 2013 Scorecard, an independent industry evaluation of the best patent portfolios conducted by the research firm 1790 Analytics.
• Has handled Patent and IP-based sales involving hundreds of millions of dollars
• Assisted Activision on IP issues associated with its $100 million acquisition of the Guitar Hero franchise from Red Octane
• Has successfully assisted Playfish in shutting down unauthorized secondary markets for its virtual goods and currency
• Co-lead trial team for Computer Associates, Inc. in a matter involving the divestiture of an open source software product prevailing on all substantive issues and obtaining an award of attorney's fees
• Advised StarMine LLC from its inception on IP issues and developed and implemented IP strategy through its sale to Thomson-Reuters, Inc.
• First chaired team that obtained preliminary and permanent injunction on behalf of financial services company for a business method patent relating to the municipal bond industry
• Obtained patent for and developed successful multi-million dollar licensing program for Information Planning Management Service, Inc.
• Managed internet portfolios and assisted in IP based sale of United Toll, LLC to a Roper Industries, Inc. entity
• Prevailed in a patent interference matter for a university professor for his Nobel-prize winning invention in the field of Chemistry
• First chaired team that successfully sued the United States Government under 28 U.S.C. § 1498 for patent infringement in the Court of Federal Claims
• First chaired team that successfully defended two patent infringement lawsuits in the Internet coupon field and successfully enforced patent against a competitor in a third suit; then assisted in sale of that business to Catalina Marketing Corp.
• First chaired team that, in a declaratory judgment action filed against a California company in Asheville, NC, obtained summary judgment of infringement, validity and enforceability on behalf of a patent owner
• Successfully represented a bioinformatics company in a patent infringement lawsuit involving Oxford Gene Technology patents relating to oligonucleotide arrays
• Developed a patent portfolio, which has been successfully enforced, for pioneering semiconductor technology relating to gallium nitride based blue LEDs and blue laser devices

Honors

Media, Technology and Telecoms, Legal 500, 2016

IP Stars, Managing Intellectual Property, 2013-2014

Intellectual Property - Northern Virginia, Chambers USA, 2007-2016

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

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

DC Area's Go-To Attorneys, Washington SmartCEO

Martindale-Hubbell, AV® Rated

Articles

• "Bitcoin Fundamentals" Lexis Practice Advisor, 2016
• "2015 Bitcoin and Beyond: Current and Future Regulation of Virtual Currencies," The Ohio State Entrepreneurial Business Law Journal, Volume 9.2
• "Make Sure Your Virtual Currency Doesn’t Enter Illegal Gambling Territory," JD Supra, February 2, 2015
• "2 Courts Dismiss Class Actions Involving Virtual Casinos," Law360, December 1, 2015
• "Not So Silky Road," JD Supra, February 5, 2015
• "FinCEN Addresses Illegal Sports Betting," JD Supra, January 28, 2015
• "IRS Issues Significant Convertible Virtual Currency Ruling - Bitcoin Community Abuzz," JD Supra, March 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
• "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
• "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
• "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
• "Overview of Legal Issues with Virtual Currencies," Pillsbury Publications, 2012

Blog Posts

• "Patent Strategies for Cryptocurrencies and Blockchain Technology," January 16, 2018
• "SEC Takes $15 Million Bite Out of an ICO," December 12, 2017 
• "CFTC Issues Primer on Virtual Currency, Virtual Tokens and ICOs," October 30, 2017
• "China Halts ICOs," September 5, 2017 
• "Cryptocurrency Traders Beware – The Taxman Cometh!," August 29, 2017 
• "SEC Issues Warning on Certain ICOs," August 28, 2017 
• "SEC Declares That Initial Coin Offerings (ICOs) May Be Securities; Finds DAO a Security," July 26, 2017
• "New Hampshire Exempts Bitcoin from Money Transmitter Regulation," June 14, 2017
• "Nevada Passes Pro-blockchain Law," June 13, 2017
• "Court Rules Virtual Currency Casino Not Illegal Gambling Despite Secondary Market," November 16, 2015

Media Mentions

• Spend Money on New Money, PressReader, February 2017
• How to Make Real Money From Virtual Things, Inc. Magazine, February 2017
• Trademarking Bitcoin, Cryptocoins News, March 2015
• Virtual Currency Gets Real, IEEE Spectrum, May 2012

Books

Media Mentions

Speaking Engagements

• Jim has spoken at a variety of conferences and seminars, and specializes in various private, in-house presentations including to major credit card companies.
• Speaker, Blockchain Webinar, March 15, 2017
• Speaker, "Don’t gamble with your Business Model: Cutting edge legal issues and potential regulatory enforcements for social gaming, eSports and fantasy sports," Gaming NOW Summit Las Vegas, September 2, 2015
• Speaker, “Patents and Other Legal Issues with Bitcoin,” Bitcoin Foundation’s DevCore Event Series, February 10, 2015
• Speaker, “BitCoin Regulatory Considerations,” Ohio State Entrepreneurial Business Law Journal Symposium, 2014
• Speaker, “World Bank Panel on Virtual Currencies: Legal, Regulatory, and Policy Implications,” May, 2014
• Speaker, “Gamblification,” Game Business and Legal Affairs 2014, May 19, 2014
• Speaker, “The Real Issues with Virtual Currency,” Pillsbury webinar, April 22, 2014
• Speaker, “New Ideas in Bitcoin,” Inside Bitcoins, April 7, 2014
• Speaker, “Gamblification! Interaction between Social Games and Online Gambling,” Social Gambling & Gaming Summit, December 10, 2013
• "Gamblification: Gaming and Gambling Partnerships," Gamer Technology Law Conference, October 7, 2013
• Moderator, “Gamblification! Interaction between Social Games and Online Gambling,” American Bar Association Forum on the Entertainment & Sports Industries, June 10, 2013
• Speaker, “Clarifying the blurred legal boundaries between various forms of social, virtual currency, prediction, sweepstakes and other forms of gaming – what you can and can’t do,” Social Casino Summit San Francisco 2013, April 25, 2013
• "Obeying the Law in a Virtual World," Social Gaming and Virtual Goods World, December 6, 2011
• "Not Just Fun and Games: The Legal and Privacy Implications of Virtual Currency," Pillsbury webinar, October 24, 2011
• "Overview of Legal Issues with Virtual Currencies," Virtual Goods World – Europe, November 16, 2010
• "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies," Engage! Expo California, September 22, 2010
• "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies," PLI Technology and Entertainment Convergence 2010: Hot Business and Legal Issues in "Technotainment", San Francisco, September 22, 2010
• "Legal Issues with Virtual Worlds, Virtual Goods and Virtual Currencies," PLI Technology and Entertainment Convergence 2010: Hot Business and Legal Issues in "Technotainment", New York, September 10, 2010
• "Top Legal and Business Issues with Virtual Worlds," Engage Expo New York, February 16, 2010
• "Top Legal and Business Issues with Virtual Worlds," Engage Expo California, September 23, 2009
• "Intersecting Interests: Virtual Worlds and the Law," Metanomics stage in Second Life, May 20, 2009

Events

Memberships

American Bar Association—Vice-Chair, Section of Science & Technology Law, Virtual Worlds and Multi-User Online Games; Patent, Trademark and Copyright Committee; Section of Intellectual Property Law—Special Committee on Computer Gaming

International Association of Privacy Professionals

International Technology Law Association—Chair, Social Media & Games Committee

Association of Virtual Worlds—Advisory Board Member; Chair of Legal Committee

American Intellectual Property Law Association—Chair, Open Source Subcommittee; Electronic and Computer Law Committee; Patent Law Committee; Emerging Technology Committee

District of Columbia Bar—Arts, Entertainment, Media & Sports Law Section

Editorial Advisory Board Member for The Lexis Practice Advisor Journal

Patent Lawyers Club of Washington (Past President)

Intellectual Property Owners (IPO)—Open Source Committee

He has been a member of the Board of Trustees and Secretary of the Software Patent Institute; served as Chair of the Patent, Trademark & Copyright Section of the Young Lawyers Division of the ABA; was President of the Patent Lawyers Club of Washington; was a member of the Board of Governors of the Patent and Trademark Office Society; served as an adjunct professor for several years teaching a legal strategy course in Johns Hopkins MBA program.

Digital Media