Paul Godfread

“It is a great pleasure to see clients thrive and grow. Legal representation should be based on building a relationship and not a mere transaction.”

Paul has a wide range of experience helping businesses with intellectual property, data privacy, general business law and litigation. Before law, Paul worked in information technology. His real-world IT and business experience allow him to find better ways to help clients adapt to new technologies.

Paul has represented a diverse range of businesses from new startups to businesses that have been trusted for generations. Paul’s clients have come from software, retail, agriculture, marketing, automotive, manufacturing, media, foods, personal care, financial services, and many others. He often uses lessons from one industry to better help clients in other industries.

Representative Experience

Advises businesses on intellectual property, data privacy, technology, and commercial matters, with extensive experience in trademark and copyright disputes, licensing, privacy compliance, and complex business litigation.

Intellectual Property Law

Experienced in all aspects of trademark prosecution before the USPTO.
Advised clients on possible risks and opportunities relating to new brands and advertising copy.
Represented companies in disputes before the Trademark Trial and Appeal Board.
Represented software developers, designers, artists, and musicians as well as companies in all aspects of copyright licensing and enforcement matters.
Coordinated enforcement efforts with online intermediaries such as Amazon, Facebook, and Google.
Negotiated and drafted license agreements for use in joint ventures, franchises, and affiliates.
Represented companies in state and federal court for infringement and unfair competition claims.
Represented companies in domain name disputes under the UDRP in arbitration and under the ACPA in federal court.
Coordinated multi-jurisdictional litigation and enforcement efforts with co-counsel around the world.

Data Privacy Law

Counseled clients on compliance with data privacy laws and regulations including GDPR, CCPA, and other data privacy regulations.
Drafted terms of service and privacy policies for web-based businesses and successfully enforced those policies in court.
Counseled on the risks associated with data breach and helped companies prepare for and respond to incidents related to data compromise issues.
Coordinated with information technology professionals to improve business readiness for a variety of technical and legal issues.

Litigation

Lead attorney for trials, evidentiary hearings, and appeals.
Obtained preliminary and permanent injunctions against trademark, copyright, and trade secret infringers.
Represented clients in a wide range of intellectual property, contract, tort, and commercial disputes in state and federal courts.
Arbitration and federal court litigation with regard to copyright ownership matters.
Extensive experience with pre-Rule 26 conference early discovery subpoenas and motions to quash for internet subscriber information.
Obtained many favorable settlements for both plaintiffs and defendants in a variety of intellectual property and business disputes.

Business

Represented several businesses as outside general counsel.
Regularly negotiated and drafted contracts for a variety of business and technology needs including service agreements, intellectual property licenses, joint venture agreements, real estate leases, subscription agreements, independent contractor agreements, EULAs, and distribution agreements.
Represented clients during mergers and acquisitions.
Helped clients deal with collections, debts, finding hidden assets, and enforcing liens and judgments.
Helped businesses avoid loss of assets in bankruptcy proceedings.
Provided cost effective representation to entrepreneurs helping them to become established businesses.

Education

William Mitchell College of Law

Saint Olaf College

Of Note

In addition to business representation, Paul regularly provides pro bono assistance for clients with First Amendment issues and for musicians and artists. He regularly volunteers through groups such as the Electronic Frontier Foundation and the Minnesota Springboard for the Arts.

Paul is an adjunct faculty member at Mitchell Hamline College of Law and has taught classes in copyright law, trademark law, and legal writing.

Professional & Civic Activities

International Trademark Association – Internet Committee Member
Minnesota Intellectual Property Law Association
Minnesota State Bar Association
American Bar Association – Business Law Section
French American Chamber of Commerce
Minnesota Interactive Marketing Association

Admissions

Minnesota
District of Minnesota
Bankruptcy Court District of Minnesota
District of North Dakota
Western District of Wisconsin
District of Colorado

Publications

Internet Law for the Business Lawyer, chapter co-author, “Trademarks, Marketing, and Advertising” (2012)

Bringing John Doe to Court: Procedural Issues in Unmasking Anonymous Internet Defendants,

co-authored with Robert G. Larson, 38 Wm. Mitchell L. Rev. 328 (2011).

Recent Developments in Section 230 Immunity Cases, 67 Bus. Law. 369 (2011).

Developments in Domain Names, with Kristine Dorrain, 66 Bus. Law. 221 (2010).

“Watch” Out for the First Sale Doctrine: Costco v. Omega, MIPLA New Matter Newsletter, June 2010.

Survey of the Law of Cyberspace: Domain Names, with Kristine Dorrain, 65 Bus. Law. 251 (2009)