Julia Lisi
PEOPLE

Julia Lisi

Associate
lisi.julia@dorsey.com

Overview

Julia helps clients develop and protect their brands and creative works in U.S. and foreign markets.

Julia is an associate in Dorsey’s Trademark, Copyright and Advertising Group. She advises clients in the creation, registration, and enforcement of trademarks and copyrights. Julia works with clients of all sizes in a wide range of industries, including pharmaceuticals, gaming, food and beverage, consumer products, hospitality, educational testing, healthcare, and professional services. Julia helps clients enforce their IP rights online and in social media through effective communications, takedown requests, and UDRP complaints.

Julia started her career as a corporate attorney and continues to serve as an IP and software specialist in mergers, acquisitions, divestitures, and secured financing transactions. Her expertise includes structuring and conducting IP due diligence, drafting and negotiating purchase, transition services, and license agreements, and organizing and recording transfers of IP assets. She identifies creative solutions for remedying gaps in IP protection, ensuring that her clients’ rights and interests are protected.  

Julia is a contributor to Dorsey’s critically-acclaimed IP blog, TheTMCA.com, which focuses on legal developments relating to trademarks, copyrights, and advertising. In 2023, Julia received Dorsey’s Pro Bono Scales of Justice award for her impactful assistance provided to pro bono clients.

Education & Admissions

University of Minnesota Law School (J.D., 2020), cum laude

Carleton College (B.A., 2016), With Distinction

Admissions

  • Minnesota

Experience

Representative Work

Internet and Social Media Matters

  • Helps clients take down fraudulent or infringing websites, mobile apps, social media accounts, and product listings.
  • Secures the transfer of cybersquatting domain name registrations under various dispute resolution policies, including the UDRP.
  • Defensively registers trademarks with the Trademark Clearinghouse (TMCH) to prevent cyber squatters and online trademark infringement. 
  • Drafts Terms of Service and Terms of Use and counsels clients on how to manage content posted by online users.

Trademark Clearance, Registration, and Maintenance

  • Advises clients on the selection, registration, protection, and enforcement of trademarks both in the U.S. and internationally.
  • Conducts preliminary and comprehensive trademark clearance searches and provides opinions on the availability of proposed marks for use and registration U.S. and foreign markets.
  • Maintains and monitors trademark watches to detect infringement in the U.S. and abroad.

Intellectual Property Enforcement

  • Devises and coordinates global trademark enforcement strategies, including sending demand letters and negotiating and drafting settlement and coexistence agreements.
  • Represents clients in opposition proceedings at the USPTO’s Trademark Trial and Appeal Board.

Copyright Registration, Enforcement, and Rights Clearance

  • Enforces copyrights online by leveraging the procedures of the Digital Millennium Copyright Act (DMCA) and the Terms of Service for web platforms.
  • Assists clients in registering copyrights in the U.S. Copyright Office for various works of authorship, including product packaging, test banks, and secure tests.
  • Assists clients with copyright clearance, including locating rights holders, advising on fair use, and determining whether a given work is in the public domain.  
  • Submits public comments in response to the U.S. Copyright Office’s interim rules, advocating for reform in the secure test registration regime.

Licensing 

  • Drafts trademark licensing agreements for the production, sale, and co-branding of alcoholic beverages.
  • Prepares data and software license agreements.
  • Drafts content license and assignment agreements.
  • Negotiates sync licenses for videos of musical performances.

Accolades

50+ Diversity& Inclusion Hours 2024

  • Contributed more than 50 Diversity & Inclusion hours, 2022-2024
  • MSBA North Star Lawyer, 2023
  • Dorsey Pro Bono Scales of Justice, 2023

Julia Lisi