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 COMPLYING WITH U.S. AND INTERNATIONAL PRIVACY LAWS AND DEVELOPING, PROTECTING AND ENFORCING THEIR BRANDS AND COPYRIGHTABLE WORKS.

For over twenty 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. 

Jamie is Chair of the firm’s Cybersecurity, Privacy and Social Media Practice Group. A technology lover, Jamie guides clients through complex and ever-changing privacy laws and internet regulations. She has been helping clients comply with the European Union’s General Data Protection Regulation (GDPR) in terms of external policies/agreements, internal processes, and responding to data subject requests. She has extensive experience advising on website and mobile app terms of use and privacy policies and licensing agreements having drafted over 100 sets of website and mobile app policies. She also helps clients comply with email and text messaging laws and regulations and deal with internet fraud. She has an interest in facial recognition, other biometrics, and new forms of identification and authentication and the privacy issues arising from them.

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 prosecuted over 100 trademark oppositions with the U.S. Trademark Trial and Appeal Board. She has deep experience with domain names, successfully assisted several clients with applications to run .brand generic top level domain names, and is assisting several domain name registry operators with contracts, policy development, and compliance with ICANN rules. Jamie also develops defensive domain name strategies and handles domain name disputes.

Jamie is a frequent author and national lecturer on privacy, mobile apps, trademark law, internet law, social networking, and domain names. She has served several terms on the Internet Committee of the International Trademark Association and is past Chair of the Computer and Technology Law Section of the Minnesota State Bar Association. 

Jamie is a contributor to Dorsey’s critically-acclaimed IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. TheTMCA.com was named one of the “Top 50” law blogs by the ABA Journal in 2017.

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 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)

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 over 100 website and mobile app terms of use and privacy policies for numerous clients, including in areas of ephemeral images, restaurant services, airlines, medical services, energy, retail, home improvement, and others
  • Draft community guidelines and other agreements for use with mobile applications
  • Counsel clients on drone laws and draft policies regarding commercial use of drones (UAS) in connection with precision agriculture software platforms
  • 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
  • Assisted three clients in sucessfully 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 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
  • 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
  • Handled over 100 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.
  • 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

There’s an App for That; Now There’s .APP for That Too
What’s up with WHOIS? The GDPR May Limit or Prevent Access to Domain Name Registration Information
To Shoot or Not to Shoot? The Legality of Downing a Drone
"To Shoot or Not to Shoot? The Legality of Downing a Drone," Nebraska Cattleman Magazine (Page 28-30)
Dorsey Partner Jamie Nafziger's Select Presentations
Q&A: Drone Attorney Jamie Nafziger
"Legal Issues Regarding Data Collected by Drones," Nebraska Cattleman Magazine
Release the Drones: New Small UAS Regulations Now in Effect in the U.S.
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
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
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

News & Press Mentions

Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review
Dorsey’s Trademark Lawyers Honored in World Trademark Review 2017
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
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 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 Partners Melissa Krasnow and Jamie Nafziger Provide Legal Perspectives on Negative Online Reviews
Dorsey’s Trademark Lawyers Honored by World Trademark Review
Dorsey Partner Jamie Nafziger Provides Trademark Advice in Finance & Commerce
Dorsey Partners Jamie Nafziger and Greg Pulles Discuss New Online Communication Rules for Financial Institutions in Compliance Week
Dorsey Ranked Highly in World Trademark Review Survey
Dorsey Partner Jamie Nafziger Comments on Terms-of-Use Agreements in Compliance Week
Dorsey Partner Jamie Nafziger Quoted in Twin Cities Business on Social Media's Involvement in the Workplace

Events & Speaking Engagements

Facial Recognition and Other Biometrics: How to Reduce the Risk of Privacy Violations at Technology Law Institute
"“Reasonable” technical competency, an unreasonable expectation?" Moderator, MSBA Roundtable
"What Next? The Future of Identity and Authentication Protocols Post Equifax Breach," The 2018 Midwest Legal Conference on Privacy & Data Security
"Gazing Into the Crystal Ball: Blockchain, Biometrics, Geolocation and More!" The 2018 Midwest Legal Conference on Privacy & Data Security
Seminar Playback: The EU General Data Protection Regulation (GDPR): The Time to Act is Now
"Precision Agriculture: The Business of Growth and How IP Laws Protect It," Dorsey & Whitney's 28th Annual Corporate Counsel Symposium
An Exploration of the Commercial Use of Drones in Agribusiness, Infrastructure and Mining
Webinar Playback: An Exploration of the Commercial Use of Drones in Agribusiness, Infrastructure and Mining
Children's Online Data & Privacy
Farmer Cooperatives Conference

Industries & Practices

Educational Publishing, Technology & Services
Cybersecurity, Privacy & Social Media
Trademark, Copyright, Advertising & Brand Management
  • Banking and Financial Institutions
  • Blockchain & Digital Assets
  • Cooperative Law
  • Cybersecurity, Privacy & Social Media
  • Educational Publishing, Technology & Services
  • Emerging Companies
  • Energy & Natural Resources
  • Food, Beverage & Agribusiness
  • Healthcare
  • Intellectual Property Litigation
  • Mergers & Acquisitions
  • Public-Private Partnerships
  • Technology
  • Technology Commerce
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • Planning Committee, Midwest Legal Conference on Privacy & Data Security (2018-2019)
  • Plsnning Committee, Technology Law Institute (numerous years including 2018)
  • 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 (2016-2018)
  • 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)
  • Member, Board of Trustees, The Works Engineering Museum (2010-2016); Vice Chair and Secretary, 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 - 2018

    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