Jamie N. Nafziger
PEOPLE

Jamie N. Nafziger

Partner
nafziger.jamie@dorsey.com

Overview

JAMIE HELPS CLIENTS OFFER SOPHISTICATED ONLINE SERVICES ON A GLOBAL SCALE BY APPLYING HER EXTENSIVE KNOWLEDGE OF THE INTERNET AND MOBILE APPS. SHE ALSO GUIDES COMPANIES THROUGH THE COMPLEXITIES OF DEVELOPING, PROTECTING AND ENFORCING THEIR BRANDS AND COPYRIGHTABLE WORKS.

For over eighteen years, Jamie has helped clients grow their businesses by developing stellar brands, advertising their products and services, and launching cutting-edge online services and mobile apps. She is Chair of the firm’s Cybersecurity, Privacy and Social Media Practice Group.

As part of the firm's top-ranked trademark team, Jamie helps clients develop branding strategies and acquire and enforce U.S. and international rights in trademarks and copyrights. Jamie has deep experience with domain names and is assisting several clients with applications to run .brand generic top level domain names. Jamie also develops defensive domain name strategies and handles domain name disputes.

A technology lover, Jamie guides clients through complex and ever-changing privacy laws and internet regulations. She has extensive experience advising on website and mobile app terms of use and privacy policies and licensing agreements. She also helps clients comply with email and text messaging laws and regulations and deal with internet fraud.

She is a frequent author and national lecturer on mobile apps, privacy, trademark law, internet law, social networking, and domain names. Jamie serves on the board of The Works, a kids’ hands-on engineering museum.

Education & Admissions

University of California, Berkeley, School of Law (Boalt Hall) (J.D., 1997), Prosser Prize, Advanced Legal Research; Prosser Prize, Copyright and Unfair Competition

Northwestern University School of Law (1994)

Stanford University (B.A., 1991)

Admissions

  • Minnesota

Experience

Representative Litigation

  • Successfully resolved worldwide trademark dispute between two sporting good companies including developing strategy to gain leverage in trademark oppositions in multiple countries
  • Rocket Trademarks Pty Ltd. v. Coolibar, Inc. (successfully defended client's trademark applications against oppositions in Australia and Canada; awarded attorney's fees in Australia)
  • Dow Jones Reuters Business Interactive LLC v. Webactive GmbH (successfully opposed infringing trademark application in Germany)
  • Northwest Airlines, Inc. v. Horizon Air Industries, Inc. (successfully settled opposition so that infringing trademark applications were withdrawn in U.S. and Canada)
  • Northwest Airlines v. Worldlink Media Inc. (negotiated trademark consent agreement)
  • Northwest Airlines v. PWI, Inc. (successfully prosecuted Uniform Dispute Resolution Policy proceeding to obtain domain name from cybersquatter)
  • In re Supervalu Inc. (successfully obtained reversal of refusal of trademark applications at the Trademark Trial and Appeal Board)
  • Prairie Winds Energy, Inc. v. East River Electric Power Cooperative (successfully settled opposition against client's trademark applications)
  • Wells Fargo Home Mortgage v. Silverlink (obtained transfer of infringing Internet domain name through negotiation)
  • Successfully obtained removal of infringing games and developer page from online gaming site
  • Successfully removed explicit photos of client from blogs while shielding client's identity
  • Kepner Tregoe, Inc. v. Executive Development, Inc. (D.N.J.) (assisted in winning summary judgment for defendant in copyright infringement case)
  • U.S. Bank v. First Savings Bank (D. Kan) (helped prepare for jury trial in trademark infringement case)

Representative Transactions

  • Assist clients in clearing, registering and policing thousands of trademarks on a worldwide basis
  • Plan strategy for and manage trademark portfolio for international software company in mobile app industry
  • Assist children's mobile app providers in complying with Children's Online Privacy Protection Act (COPPA) and Apple's requirement of parental gate
  • Helped form four new social networks including drafting platform policies and dealing with virtual currency-related legal issues
  • Draft mobile app terms of use and privacy policies for numerous clients, including in areas of ephemeral images, restaurant services, home improvement, and others
  • Draft community guidelines and other agreements for use with mobile applications
  • Draft terms of use and privacy policy for education technology provider, including advising on COPPA compliance
  • Assist with website policies and regulatory compliance for company in bitcoin industry
  • Manage trademark portfolio and enforce trademarks for organic food company
  • Assisting three clients in applying for new generic top level domain names (gTLDs) with ICANN
  • Counsel clients on defensive planning for launch of new gTLD system in 2013 including serving as Trademark Agent in Trademark Clearinghouse (TMCH)
  • Assist Fortune 100 insurance company with internal social networking policy
  • Draft Facebook Page terms of use and privacy policies for several clients
  • Draft complex terms of use for website active in 21 countries with significant user-generated content issues
  • Draft browse wrap and click wrap agreements in connection with clients’ websites
  • Draft social media agency agreement
  • Manage trademark portfolio and enforce trademarks for medical device company
  • Manage trademark portfolio for software company in energy management and carbon tracking industry
  • Manage trademark portfolio for airline client with hundreds of marks worldwide
  • Advise online publishing company on complex copyright issues
  • Draft terms of use for dozens of clients' websites and mobile applications
  • Counsel clients on developing social networking and blogging best practices plans, policies for employees, and website disclaimers
  • Counsel clients on complying with Children's Online Privacy Protection Act (COPPA)
  • Help clients gain protections available under Digital Millennium Copyright Act (DMCA)
  • Counsel clients and assist with drafting rules for sweepstakes and contests on Facebook
  • Negotiate publishing agreement and ancillary agreements for autobiography of U.S. public figure
  • Draft product development and manufacturing agreement
  • Managed trademark portfolio, enforced trademarks and developed licensing strategy for livestock feed company
  • Manage trademark portfolio and domain name portfolio and enforce trademarks for medical services company
  • Successfully obtained transfer of infringing domain names to clients in over 40 different matters
  • Conducted due diligence on intellectual property-related issues on acquisition of multiple food companies
  • Help client remove infringing logo from Twitter
  • Help various app developers design online advertising platforms and draft user rules in compliance with FTC endorsement guidelines
  • Manage trademark portfolio for information services client with marks in 38 countries, including giving strategic advice on brand development, clearance searching, preparing applications, monitoring and enforcing marks against others
  • Negotiate and draft numerous intellectual property-related agreements for education client
  • Help client get offensive video removed from YouTube
  • Register restricted and unrestricted country code domain names in 50 countries for information services client
  • Counsel client on trademark aspects of four-company merger and name for continuing company
  • Handling multiple trademark oppositions at the U.S. Trademark Trial of Appeal Board (TTAB) and international opposition and cancellation proceedings
  • Manage trademark portfolio of famous artist
  • Successfully resolve false advertising claim
  • Assisted National Cooperative Business Association in preparing successful proposal to ICANN to be sponsor of new generic top level domain (TLD) registry for .coop, which is now one of the most successful, restricted top-level domain names on the Internet
  • Represent fifteen non-profits in their trademark and copyright matters on a pro bono basis
  • Counsel, obtain clearance searches for, and register trademarks for European Internet-based client in 29 countries
  • Register toy company's trademarks with U.S. Customs and Border Protection
  • Negotiate purchases and transfers of domain names

News & Resources

Articles

Organic Internet Growth: New .ORGANIC Domain Names Launch
New York’s Proposed Regulation of Bitcoin Businesses - Polishing Up or Polishing Off?
Ten Legal Practice Tips: Developing and Distributing Apps
5 Things to do NOW to Protect Trademarks with New Domain Names (gTLDs)
Consumer Protection Wherever You Pay: FTC Releases Mobile Payment Industry Report
Trademark Clearinghouse For New gTLDs Opens March 26
Apple Launches New Vanity URLs for Apps: Protect Your Trademarks Now
Facebook Places Has Checked-in: Brand Owners Should Consider Proactively Setting Up Pages to Prevent Unfixable Errors
"Heads You Win, Tails You Lose: Striving to Make Sense of Keyword Advertising Cases Post Rescuecom," Landslide Magazine
"Blogging, Online Employee Comments, and Online Endorsements: Complying with the FTC’s New Guidelines Just Got Easier," Dorsey & Whitney LLP eUpdate
Internationalized Domain Name Process Launched November 16, 2009
Keyword Advertising after Rescuecom: Predictability Remains Elusive
Don’t Just Close Your Eyes and Leap: Top Five Issues in the Facebook Terms of Use
Brand Owners and U.S. Government Tell ICANN: Domain Name Plan Will Confuse Consumers and Hurt Us – Especially in These Tough Economic Times
"Web 3.0 Free-for-All," AdWeek
Deadline Extended to Submit Comments on ICANN’s Draft Applicant Guidebook
Domain Name Alert: Ringing Up The New .tel Top-Level Domain Name: One of Many TLDs to Come
Protecting Your Brand in DotChaos -- Overview of the New Generic Top Level Domain Name Application Process and Updates from ICANN's November 2008 Meeting in Cairo
Web Free-For-All on the Horizon – Brand Owners Should Begin Planning Their Defensive Strategy Now
Internet Governing Body ICANN Approves Next Generation of Top Level Domain Names

News & Press Mentions

Dorsey Partner Jamie Nafziger Comments on New Drone Rules
Dorsey Partner Jamie Nafziger Talks About Drones Replacing Aircraft
Dorsey Partner Jamie Nafziger Comments on FAA Drone Rules and Agriculture
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Dorsey Congratulates Sandra Edelman, Jamie Nafziger and Lisa Osman on Being Named to the IP Stars-Top 250 Women in IP
Dorsey Congratulates Sandra Edelman, Jamie Nafziger and Lisa Osman on Being Named to the IP Stars-Top 250 Women in IP
Dorsey Congratulates Sandra Edelman, Jamie Nafziger and Lisa Osman on Being Named to the IP Stars-Top 250 Women in IP
Dorsey Named One of Top Trademark Firms
Dorsey Named One of Top Trademark Firms
Dorsey Named One of Top Trademark Firms
Dorsey Partners Melissa Krasnow and Jamie Nafziger Provide Legal Perspectives on Negative Online Reviews
Dorsey Partners Melissa Krasnow and Jamie Nafziger Provide Legal Perspectives on Negative Online Reviews
Dorsey’s Trademark Lawyers Honored by World Trademark Review
Dorsey’s Trademark Lawyers Honored by World Trademark Review
Dorsey’s Trademark Lawyers Honored by World Trademark Review
Dorsey Partner Jamie Nafziger Provides Trademark Advice in Finance & Commerce
Dorsey Partner Jamie Nafziger Provides Trademark Advice in Finance & Commerce

Insights

Dorsey Partner Jamie Nafziger's Select Presentations
Every Brand Owner Needs to Click This Link: ICANN Reveals List of 1,930 Applications For Generic Top-Level Domain Names (gTLDs)
Planning for Proliferation: Delays in the Expansion of Generic Top Level Domain Names Create Additional Time to Protect Your Company’s Rights
FTC Fires Warning Shot at Mobile App Developers – W3 Innovations to Pay $50K Penalty for Violations of Children’s Privacy
Largest Expansion of Domain Name System in History: New Domain Name Plan Approved by ICANN on June 20, 2011
.XXXcluding Your Brand from the Online Adult Entertainment Industry
Courts Split Over Whether Sale of Keyword Ads Infringes Trademark Rights
"Internet Governing Body ICANN Approves Next Generation of Top Level Domain Names," Computer Law News

Industries & Practices

Educational Publishing, Technology & Services
Cybersecurity, Privacy & Social Media
Trademark, Copyright, Advertising & Brand Management
  • Banking
  • Cooperative Law
  • Cybersecurity, Privacy & Social Media
  • Educational Publishing, Technology & Services
  • Emerging Companies
  • Energy
  • Food & Agribusiness
  • Franchise & Distribution Law
  • Health Care
  • Intellectual Property Litigation
  • Mergers & Acquisitions
  • Public-Private Project Development
  • Technology Commerce
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • Chair, Advising Businesses That Sell Goods or Services Online, Minnesota CLE Course (March 2016)
  • Chair, Computer & Technology Law Section, Minnesota State Bar Association (2013-2014); Vice Chair, (2012-2013); Treasurer, (2011-2012); Secretary (2010-2011)
  • Member, International Trademark Association, Internet Committee (2016-present)
  • Member, International Trademark Association, Emerging Issues Committee (2014-2015)
  • Member, International Trademark Association, Internet Committee (Web 2.0 Working Group) (2010-2013)
  • Communications Committee Co-Chair, Minnesota Women Lawyers (2011-2013); Leadership Committee (2008-2009); Technology Committee (2009-2010); Communications Committee (2010-2011)
  • Vice Chair and Secretary, Board of Trustees, The Works Engineering Museum (2010-present); Member, Development Committee, Capital Campaign Steering Committee, and Governance Committee
  • Guest Lecturer, University of Minnesota Law School, Privacy Law (2013, 2014)
  • Member, Minnesota State Bar Association Assembly (2013-2014); Member, Elections/Appointments Committee
  • Guest Lecturer, William Mitchell College of Law, Intellectual Property Law Clinic (2010-2011)
  • Volunteer Recruiter for Minnesota, Election Protection, Lawyer's Committee for Civil Rights Under Law (2008), recruited over 250 attorneys and law students
  • Director, Board of Directors, Minnesota Justice Foundation (1999-2003); Member, Strategic Planning Committee (2001-2002); Chair, Development Committee (2002-2003)
  • Accolades

    • Listed in "Top 250 Women in IP" by Managing Intellectual Property, 2014
    • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2013 - 2016

    Lexology Legal Writing Awards Winner 2010

    • Author of the Year - E-commerce USA, Lexology (Association of Corporate Counsel), 2010

    North Star Lawyer logo

    • MSBA North Star Lawyer, 2012 and 2014
    • Pro Bono Scales of Justice Awards, 2009; 2012
    • Listed as a "Rising Star" by Minnesota Super Lawyers, 2005; 2011
    Jamie N. Nafziger