Brian J. McGinnis

Partner
  • 11 South Meridian Street
    Indianapolis, IN 46204-3535
    P:317-231-6437
    F:317-231-7433

Brian J. McGinnis is a partner with Barnes & Thornburg LLP where he is a member of the firm's Intellectual Property Department and the Internet and Technology and the Data Security and Privacy practice groups. He is resident in the firm’s Indianapolis office.

Brian's practice is focused at the intersection of the law and technology. He is a Certified Information Privacy Professional in the United States (CIPP/US). The CIPP/US designation is the leading privacy certification for professionals around the world who serve the data protection, information auditing, information security, legal compliance and risk management needs of organizations. Brian has developed a national practice advising clients ranging from multinational corporations to startups on the broad range of legal matters pertaining to technology, intellectual property protection and enforcement, brand development, Internet law matters, and data privacy and cybersecurity law and policies.

Brian brings a tech-savvy, business-oriented approach to the practice of law, focusing on providing his clients with practical legal advice designed to position businesses for growth while effectively managing risk against business opportunity.

Intellectual Property and Internet Law

Brian regularly advises clients on a wide range of intellectual property and Internet law issues, including:

  • Intellectual property matters, including the development, protection, and enforcement of trademarks, brands, trade dress, non-traditional trademarks, and copyrights; domestic and international trademark and copyright application filings, prosecution, and office action responses, including management of worldwide applications and Madrid Protocol filings; IP portfolio maintenance and management, including management of trademark portfolios ranging in size from one to hundreds of marks; Trademark Trial and Appeal Board (TTAB) opposition litigation; international IP infringement, anti-counterfeiting strategies, and IP enforcement program development; online advertising and marketing legal compliance; right of publicity; consumer protection; and unfair competition matters 
  • Internet law matters, including Digital Millennium Copyright Act (DMCA) and Communications Decency Act (CDA Section 230) compliance, mobile application software protection and enforcement, cloud-based technologies, social media and online service provider issues and enforcement, and developing strategies for policing and protecting IP rights on the Internet 
  • Domain name matters, including litigating Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, foreign and country code top-level domain (ccTLD) domain name matters, generic top-level domain (gTLD) issues, enforcing client’s rights against cybersquatters, and advising clients on worldwide domain name registration, acquisition and disputes.

Brian is also experienced in contract negotiation and drafting, including intellectual property, software, and content licenses, contracts, and master service agreements for a range of software and technologies.

Data Security and Privacy Law

Brian also regularly advises clients on data privacy and cybersecurity matters involving:

  • Data security and privacy laws, regulations and compliance for established and emergent products and services 
  • Complex legal issues that arise from data collection, use and transfer, including technological data collection, customer communications, data analytics, online payments, data sharing and transfers, and data security 
  • Development, drafting, and implementation of privacy policies and terms of service for websites, software, mobile apps and products

He also advises clients on data security and privacy policies and procedures, including information security programs, incident response plans and related internal privacy and security policies. He works with clients on data security incident and breach preparedness, investigations, management, response and notification. These incidents can trigger a number of compliance issues, and Brian counsels clients on compliance with state data breach notification laws; privacy law and regulation standards, including the Children’s Online Privacy Protection Act (COPPA), Telephone Consumer Protection Act (TCPA), CAN-SPAM Act, Payment Card Industry Data Security Standard (PCI DSS), Gramm-Leach-Bliley Act (GLBA), and U.S.-EU Safe Harbor compliance; and privacy-by-design and security-by-design development.

As data breach counsel, Brian works with clients and a team of data breach response professionals to investigate and contain data breaches as soon as they happen under the protections of attorney-client privilege, remediate security issues to minimize business disruptions, and develop breach notification and response strategies. His efforts also involve preparing and positioning clients to defend litigation and regulatory actions, with an eye toward minimizing the impact data breaches can have on businesses, their brands and reputations.

Background and Involvement

Prior to joining Barnes & Thornburg, Brian served as in-house counsel to an intellectual property consulting and investigations firm where he advised Fortune 1000 corporations on complex IP, anti-counterfeiting, and brand protection strategies.

Brian is a member of the International Association of Privacy Professionals (IAPP), the International Trademark Association (INTA), and multiple bar associations, including the Indianapolis Bar Association, where he serves as a member of the executive committee for the Intellectual Property Section. Brian is heavily involved in advising startups on the legal issues facing new businesses and is a member of two startup organizations Launch Fishers and the Speak Easy, where he serves on the board of directors. Brian has also served as a judge for the Indiana Small Business Development Center’s (ISBDC) Indiana Companies to Watch Awards and the TechPoint Mira Awards, which honor the best of business and tech in Indiana.

He is a frequent speaker on IP, Internet, data security and privacy law matters to business groups, legal organizations and privacy seminars, including providing continuing education credit for attorneys and certified privacy professionals for the International Association of Privacy Professionals (IAPP).

Brian is proud to be able to live and work in his hometown of Indianapolis, while growing a national practice in areas of law about which he is passionate. Brian enjoys spending most of his time outside of work with his incredible wife and children, which often involves shuttling from one sporting event to another, seeking out the best food and restaurants in Indy or watching animated movies his kids have already made him watch a dozen times before.