Jacopo Liguori

Special Counsel | Milan

Jacopo leads the Italian intellectual property and technology team.

Jacopo’s expertise relates to intellectual property, commercial contracts, information technology, privacy and data protection.

He assists companies in many industries including leading companies in the fashion & luxury, insurance, financial, automotive, food and beverage, electronics and software, entertainment and multimedia, life science and pharma industries.

On the intellectual property side, he advises on filing, exploitation and enforcement of the main types of IP rights, in particular on worldwide brand protection, managing civil and criminal actions, custom monitoring, parallel imports issues and coordinating counsels in several countries (Asia, US, and EU countries).

He advises and negotiates on a wide range of commercial contracts such as IP license over trademark, copyright, patent and design, coexistence agreements, sale of IP rights, sponsorship and other agreements for the exploitation of image rights, research and developing agreement, agency, distribution and franchising agreements.

He regularly assists the corporate team in the context of a variety of transactions, preparing due diligence reports, negotiating related SPA clauses and ancillary documents such as transitional IP license agreements, transitional IT services agreements and remediation plans on privacy compliance.

He also assists clients on labelling compliance, advertising, terms and conditions, prize promotions and product placement. He represents clients in proceedings with the Italian Advertising Authority and the Italian Competition Authority in cases of unfair practice or misleading and comparative advertising.

In the field of IT law, Jacopo assists clients with the development of IT platforms, negotiating the relevant agreements such as software license, software development and maintenance agreement. He advises on IT migration projects to allow interoperability of the IT systems and data processing further to acquisition of companies or business units. He deals with IT & data protection issues within outsourcing agreements and commercial and technology joint ventures. He also assists on the setting up of e-commerce projects, drafting legal notices and disclaimers.

On privacy & data protection matters, he assists companies in setting up GDPR compliance programs, gap analysis and remediation plans, analysis of data flows, draft of records of processing, risk assessment also through technical partners, data governance and management (e.g. data processors, DPO), privacy notices and policies (e.g. employee’s use of IT means, data retention), DPIA, Data Breach, transfer of data abroad (e.g. setting up global CRM programs, binding corporate rules) and training. He also advises on complex data processing with specific risks (e.g. IoT, profiling, CCTV, biometrics, geo localization). He deals with data protection authorities and assisting in authority’s inspections, internal investigations and court proceedings (e.g. right to be forgotten).

Secretary Jessica Longi

‘‘

Able to analyse, willing to listen and is available and reacts immediately not exactly 24/7, but almost.

TopLegal IP & Life Sciences Review April/May 2019
‘‘

‘It is really a pleasure to work with Jacopo Liguori. A very good listener and always available, he ensures immediate responsiveness.’

Legal 500 Europe, 2020

Track record

Admissions

Publications

Memberships

Talks

Assisting a well-known Italian hat maker on a continuative basis in the establishment of their worldwide brand protection program, along with the relevant pre-contentious and contentious enforcement. Drafting and negotiating commercial and IP agreements and setting up of IP-related employee training

Assisting a leading perfume brand with monitoring their global selective distribution system

Advising a top-ranked ATP Player on IP portfolio planning and due diligence; worldwide surveillance of IP rights including contentious and pre-contentious enforcement; co-branding and sponsorship agreements; advertising/public engagement

Italian bar, Milan 2006

Co-author of a white paper regarding proposals for the Italian strategy on technologies based on blockchain – July 2020

‘Operational criticalities arising from data processing for direct marketing purposes and profiling, with a comparative analysis among the main jurisdictions’ – Section IX of the volume "Internet law in the digital era’ – ‘Il diritto di Internet nell’era digitale’- Giuseppe Cassano and Stefano Previti – Giuffrè Francis Lefebvre editions – 2020;

‘Smart working: air conditioning, electricity and internet: who pays for the expenses?’, May 2020, Corriere Innovazione, Corriere della Sera

Ordine degli avvocati di Milano

Member of Federprivacy and Asso DPO (data protection officer association), IAPP

‘Privacy management in companies: general rules and case studies’ (La Privacy in Azienda: principi generali e casi pratici), 15th May 2020, Webinar

IAPP - Smart Working and Usage of Employees’ emails in the Time of Covid-19’, 8th May 2020

‘Solutions and opportunities in Coronavirus times" (Soluzioni e opportunità ai tempi del Coronavirus" – 6th April 2020 – Webinar

Education


Languages


  • English
  • Italian

Dates


Joined

2018

Recognition


Milan

Via Durini 18,

20122 Milano

View Office

Meet the team