Federal Trademark Litigation
Initiated federal trademark litigation against motorcycle manufacturer’s use of recreational sport manufacturer client’s trademark. The end result stopped the defendant from using the mark and the client acquired the relevant domain name.
Domain Name Dispute
Represented publishing client in federal district court litigation action related to domain name and trademark infringement. Successfully stopped defendant from using names...
- Drake University Law School, J.D., 2002,
High Honors
Order of the Coif
Order of the Barristers
Law Review
American College of Trial Lawyers National Moot Court Competition
National Institute for Trial Advocacy (NITA) Mock Trial Competition
American Trial Lawyers Association Mock Trial Competition
CALI Excellence for the Future Award in Patent Law and Intellectual Property Litigation - Drake University, B.S. Business and Marketing, 1999,
With Honors, Summa Cum Laude
- Colegio San Cernin, Pamplona, Spain,
Spanish Language Instruction
- Minnesota State Bar, 2002
- Minnesota Federal Bar, 2002
- U.S. Court of Appeals for the Seventh Circuit, 2006
- U.S. Court of Appeals for the Eighth Circuit, 2006
- U.S. District Courts, District of Minnesota, 2002
Software patent litigation
Computer, Domain Name and Internet Disputes
Trademark Infringement, Unfair Competition, and Counterfeiting
Trademark Counseling (Brand Audits, Website Audits, Licensing)
Copyright Litigation and Licensing
American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
Minnesota State Bar Association
Society of Children’s Book Writers & Illustrators (SCBWI)
Minnesota Society of Children’s Book Writers and Illustrators
Client Choice Awards IT & Internet, 2018-2019
Selected for inclusion in The Best Lawyers in America©, 2019-2025
Selected for inclusion in Minnesota Super Lawyers, 2014-2024
Selected for inclusion in Minnesota Rising Stars, 2008-2013
Senior Advocacy Award, Drake University
Honoree of the 18th Annual National Mock Trial Tournament, American Mock Trial Association
National Champion, American College of Trial Lawyers National Moot Court Competition
Best Oralist, American College of Trial Lawyers National Moot Court Competition
National Finalist, Association of Trial Lawyers of America Mock Trial Team
American College of Trial Lawyers Outstanding Oralist Award
All American Attorney Award, American Mock Trial Association
Key to the City of Des Moines, Iowa
Adjunct Instructor, Communications Law, University of St. Thomas
Adjunct Professor, Intellectual Property Moot Court, University of Minnesota Law School
Coach, Giles Rich Intellectual Property Moot Court Team, University of Minnesota Law School (won National title in 2007)
Coach, American Mock Trial Association, Drake University
Publications
Could an animal be patented? Loophole in recent decision leaves the door open, co-authored with Bette Muirhead, Lexology, June 2014
Rewriting the America Invents Act, co-authored with Joseph Dubis, Lexology, June 2014
Using U.S. Government Content, co-authored with Barbara Marchevsky, Lexology, June 2014
Tesla Is Latest Company To Open Patent Rivals, Law 360, June 2014
Social Media Patents: Obtaining, Enforcing and Defending Patents Related to Social Media Applications, Authors: William Schultz, Robert Kalinsky, Elizabeth Tunheim Sheets, John Reinan, December 13, 2013
Minnesota Settlement Stifles Patent Troll’s Licensing Attempts, Lexology, co-authored with Michael A. Erbele, September 17, 2013
MPHJ Case Is Good News For Downstream Tech Users, Law360, co-authored with Daniel W. McDonald, September 4, 2013
Social Media Patents: Protecting Social Technology and Preventing Infringement Claims, The National Law Review, July 16, 2011
Online Copyright Protections after Viacom v. YouTube, The Magazine For The General Counsel, CEO & CFO, August/September 2012
“Business forum: Stemming the tidal wave of patent claims,” Co-authored with Daniel W. McDonald, Minneapolis StarTribune, August 4, 2012
Trademark Litigation: Online Consumer Surveys, Practical Law Company, May 2012 (co-authored Practice Note regarding use of online surveys in trademark litigation matters to assess confusion)
Takeaways From Rosetta Stone v. Google, relating to keyword advertising and trademark infringement, IP Law 360, April 23, 2012
Branding Generic Top Level Domain Names, contributed to article in Upsize Magazine branding gTLDs in October 2011
Measuring Consumer Confusion through Online Surveys, Practical Guide to Survey Acceptance, co-authored paper regarding use of online surveys in trademark litigation matters to assess confusion and co-presented at Midwest IP Institute on September 22, 2011
gTLD Expansion: What Your Business Needs to Know, American Business Journal, June/July 2011 (article explaining timeline, opportunities, and requirements related to the new generic top level domain names)
Mallets at the Ready – IP Attorneys Prepare to Bead Down Brand Abuse on Expanded Domain Names, Minneapolis/St. Paul Business Journal, November 12, 2010 (contributor to article related to expansion of top level domain names)
.Name, ABA Journal, February 2009 (article discussing implications of ICANN’s plans to sell an unlimited number of new top-level domain names; includes the business implications of the plan)
RIAA Tempers Tactics, National Law Journal, January 20, 2009 (article relating to the RIAA’s decision to modify its litigation strategy and work with Internet service providers (ISPs) to stop copyright infringement; discusses legal issues in the Sony BMG Music Entertainment v. Tenenbaum lawsuit)
Keyword Advertising Comes with Pitfalls; Here’s how to Avoid, Upsize, December 2008-January 2009 (article discussing tips for advertisers using keyword advertising on search engines such as Google and Yahoo)
Dell’s ‘Cloud Computing’ Trademark Bid Sparks Debate, IP Law 360, August 2008
Domain Brand Reinforcement Offers New Challenges Post-ICANN, Intellectual Property Today, August 2008
Solutions For Trademark Holders relating to Registerfly.com domain name registrar accreditation issues, IP Law 360, June 19, 2007
Trademarks on the Internet: An Update on Metatags, Sponsored Links and Pop-Up Ads, The IP Book 4th Edition, 2006
Presentations
On the Cutting Edge: Updates on Patent Law, Data Privacy, and E-Commerce CLE (July 11, 2019)
Hot Topics, Trends, & Updates: Cybersecurity, Patent Litigation Decisions, and the Implications CLE (July 11, 2018)
Speaker, Safeguarding Trade Secrets: Tips and Tools for Identifying, Managing, and Protecting Confidential Business Information, CLE jointly hosted with the Tennessee Chapter of the Association of Corporate Counsel, October 28, 2015
Cyberworld: Protecting Your Brand in Cyberspace, co-presented a CLE with Greg Golla, September 24, 2015
Knowledge Congress Competitor’s Comparative Advertising: Practical Guide and Best Practices in Winning Your Claims LIVE Webcast, August 14, 2013
Facebook Legal Issues, presented to Student Intellectual Property Law Association (SIPLA) at the University of Minnesota, February 13, 2013
The Relevance of Reasonable Royalties to Copyright Infringement Remedies, co-hosted ABA Roundtable discussion regarding the applicability of reasonable royalties to proving damages in copyright cases on April 3, 2012
Social Media and Your Business, co-presented at the WCCO Breakfast in Edina, Minnesota on March 29, 2012, regarding the legal implications of social media to businesses
Legal Process Outsourcing, co-presented at the American Conference Institute’s 5th National Forum on Reducing Legal Costs on October 22, 2010. The presentation discussed opportunities related to near shoring, outsourcing, off-shoring, and offshore outsourcing.
Measuring Consumer Confusion through Online Surveys, a Practical Guide to Survey Acceptance, Midwest IP Institute, October 2011 (article and presentation on developing consumer perception surveys in an online environment)
Guarding Your Work: The New Age of Intellectual Property Rights, Minnesota Society of Children’s Book Writers and Illustrators winter workshop, January 10, 2009 (discussion of copyright, trademark, and online protections for authors and illustrators)
Internet Enforcement – Who, What, and Where are we to Search? INTA Roundtable discussion, October 30, 2008 (discussion relating to domain name clearance, registration and enforcement, keyword advertising, and other online protection strategy)
Co-Host for ABA Roundtable Discussion regarding Software Trademark Law v. The Internet, June 2008
Leveraging and Protecting Proprietary Information Overseas: Conforming Company Culture to Operate on a Global Scale, co-presented at the American Conference Institute Strategic Intellectual Property Planning Conference in Scottsdale, Arizona on February 28, 2008
Protecting Intellectual Property When Representing Foreign Clients, co-presented at the American Conference Institutes Identifying and Protecting Trade Secrets Conference in San Francisco, California on June 13, 2007
Co-Host for ABA Roundtable Discussion regarding Software Patent Litigation in April 2006
Quoted
Handling the Oncoming Tide of generic Top-Level Domain Name Disputes, JAMS Dispute Resolution Alert, August 2013
Company’s ‘patent trolling’ will end in Minnesota after attorney general investigation, by Annie Baxter, Minnesota Public Radio, August 20, 2013
The Business of Viral Pet Images, petside.com
Instagram Alters Terms To Allow Sale Of User Photos For Ads, Law360, December 18, 2012
Tough Road For Keyword Ad Suits After Rosetta Stone Deal, Law360, November 19, 2012