Intellectual Property Litigation
Mindi Giftos is a shareholder in the Madison office and is a key member of Whyte Hirschboeck Dudek’s Intellectual Property Team. She represents clients in a wide array of industries with complex intellectual property matters. Mindi is well-versed in emerging IP topics and is skilled at presenting IP concepts in a clear and readily understandable manner. For that reason, she not only effectively represents her clients with their IP matters, she is also frequently asked to speak and write about pertinent IP topics.
Intellectual Property Litigation & Commercial Litigation
Mindi has advised and represented clients with high-stakes intellectual property disputes involving patent infringement, false patent marking, copyright infringement, trademark infringement, trade dress infringement and counterfeiting in federal courts throughout the United States. She has also assisted clients with opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board. In addition to her specific intellectual property expertise, Ms. Giftos has represented clients in a broad range of commercial litigation matters and business disputes involving unfair competition, unauthorized sales of goods, misappropriation of trade secrets, violations of non-compete agreements, violations of privacy rights, violations of publicity rights, defamation claims, business dissolution and distributorship disputes in both state and federal courts.
Intellectual Property Counseling & Protection
Mindi is adept at helping clients identify, register and protect their valuable intellectual property rights – such as trademarks, copyrights, and trade secrets – in the U.S. and throughout the world. She has extensive experience with the licensing and sale of IP assets and with negotiating and preparing IP-related policies and business arrangements.
Emerging Trends & Technology Law
Mindi closely tracks developing legal issues relating to branding, social media, privacy and technology. She is therefore readily able to advise her clients on potential risks and best practices in these areas. She is also skilled at preparing and negotiating complex technology transactions, such as open source software and software-as-a-service license agreements.
Community involvement is very important to Mindi. She is the Chair of the Board of Directors, a founding site liaison and active coach for Girls on the Run of Dane County, a positive youth development program which encourages young girls to become self-confident, involved, and healthy leaders. She also served as a director and president of the Board of Directors for Avenues to Community, a support broker agency that provides support services to adults with developmental disabilities and traumatic brain injuries, from 2008 through 2013.
- University of Florida Levin College of Law, J.D., 2000, with honors; Editor in Chief, Journal of Technology Law & Policy, 1999; Book Awards (highest grade) in Intellectual Property Litigation and in Techniques of Growth Management
- Florida State University, B.S., 1996
- Supreme Court of Wisconsin (2005)
- Supreme Court of Florida (2000)
- U.S. District Court for the Western District of Wisconsin
- U.S. District Court for the Eastern District of Wisconsin
- U.S. Court of Appeals for the Federal Circuit
Awards & Distinctions
- Named a "Rising Star" by Wisconsin Super Lawyers (2013)
- Advising businesses on how to effectively create and maintain Internet presences while avoiding legal pitfalls involved in social media, blogs, testimonials and websites.
- Advising businesses on effective branding, including the adoption and use of trademarks and domain names.
- Assisting businesses with identifying key intellectual property assets and advising them on how to most effectively leverage those assets.
- Navigating businesses through the federal and international trademark and copyright registration processes.
- Advising clients on comprehensive intellectual property protection, infringement, ownership and licensing.
- Preparing and negotiating a broad range of commercial agreements, such as intellectual property licenses and assignments, confidentiality agreements, entertainment agreements, advertising agreements, production agreements, promotion agreements, sponsorship agreements, agency agreements, software development agreements, software licensing agreements, software as a service agreements, non-compete agreements, and joint venture agreements.
- Advising businesses on use of open source software in commercial applications, and how to internally manage open source software usage.
- Preparing international licensing and distribution agreements.
- Conducting comprehensive intellectual property due diligence and preparing related reports in connection with large and small mergers and acquisitions.
- Litigating trademark, unfair competition, copyright and patent matters before federal courts and the Trademark Trial and Appeal Board.
- Advising businesses on how to effectively comply with consumer product safety laws both domestically and abroad, including compliance with the complex and ever-changing Consumer Product Safety Improvement Act and related laws under development internationally.
- Assisting in a broad range of commercial litigation matters, including contract claims, non-competition claims, defamation claims, products liability claims and public utility disputes.
Articles and Presentations
- What You Need to Know in The Law - Legal Update for Direct Marketers, UWEBC E-Retailer Retreat, September 11, 2014
- Canada's New Anti-Spam Law is In Effect: Are You Compliant?, IB InBusiness Madison Legal Login, July 2014
- Big Data: Privacy and Security Issues for Legal and IT, UWEBC General Counsel Special Interest Group, June 24, 2014
- 10 Things You Need to Know About Promotions and Contests, IB InBusiness Madison Legal Login, April 2014
- Is open source software right for your company?, Open source software (OSS) is a great tool. It’s free. It saves time and money. It’s often secure and reliable. It fosters innovation and collaboration. However, OSS also comes with important restrictions — and many companies are not fully aware of them. In Business, February 24, 2014.
- 5 Trending Questions on Social Media and the Law, Digital marketing — especially social media — continues to evolve at a mind-boggling pace. With this new technology also comes new questions about what can be done in social media from a legal standpoint. Shoutlet eBook, January 2014.
- Risks and Recommendations for Electronic Communications Between Physicians and Patients, 2013 MGMA Annual Conference, San Diego, CA, October 7, 2013.
- 7 Things Corporate Management Needs to Know About Data Privacy and Security, In Business, September 16, 2013.
- What you need to know about the Children’s Online Privacy Protection Act amendments, In Business, July 18, 2013.
- Implications of Already, LLC v. Nike, Inc.: A Covenant Not to Sue May Render Counterclaims of Invalidity Moot, May 2013.
- Safeguards for trademark owners in the launch of gTLDs, WTN News, March 26, 2013.
- Professional of the Week: Mindi Giftos, Whyte Hirschboeck Dudek, S.C., In Business, March 2013.
- New Photo App Raises Concerns About Kids Sending Inappropriate Pictures, TMJ Channel 4, February 21, 2013.
- What You Need to Know About Pending Legislation and Recent Updates Relating to Consumer Privacy Laws, The Business Suit, November 27, 2012.
- Untangling Fair Use: When is it Acceptable to Use Another’s Work Without a License?, Wisconsin Technology Network, October 16, 2012.
- Who Owns Your Company's Social Media Account?, Biz Times.com: Milwaukee Business News, September 17, 2012.
- 2012 Legal Update: What E-Commerce Companies Need to Know Now, UW E-Business Consortium Peer Group Retreat, September 13, 2012.
- Beware of Unofficial Solicitations Regarding Your Trademarks & Domain Name, Wisconsin Technology Network, March 20, 2012.
- A Day in the Life of a Woman Lawyer, Women's Student Law Association, University of Wisconsin Law School, March 12, 2012.
- Top 15 Intellectual Property Myths , MCA-I Madison, January 17, 2012.
- The False Patent Marking “Goldrush,” and How to Steer Clear of Prospectors, Webinar presenter, Technology Transfer Tactics, March 8, 2011.
- Customers and Privacy, presenter, UW E-Business Consortium Web & Multichannel Marketing Peer Group Meeting, March 3, 2011.
- Marketing With Social Media, presenter, Social Media & The Law, February 22, 2011.
- Strategic Planning for Marketing in the Social Media Age, WHD Forethought, 2011.
- Patent Marking Litigation Continues to Move Full Steam Ahead, co-author, DRI's The Business Suit, Volume 13, Issue 9.
- Facebook & Social Media Legal Considerations, presenter, Shoutlet, July 29, 2010.
- Keyword Advertising: An Important Marketing Tool or a Potential Minefield?, Wisconsin Technology Network, June 16, 2010.
- The Legal Side of Social Media, presenter, mca-i Madison Spring Seminar, April 22, 2010.
- Managing the Legal Aspects of Social Media and Internet Marketing, presenter, Forrester Research Interactive Marketing Council Teleconference, March 10, 2010.
- Top Legal Updates E-Commerce Companies Need to Know, presenter, UW E-Business Consortium Peer Group Spring E-Merchant Retreat, March 5, 2010.
- Are You Aware of the New FTC Advertising Guidelines?, WHD Special Report, March 2010.
- Staying Ahead of the Legal Curve When Creating & Building an Internet Presence, presenter, WHD Breakfast Seminar, February 16, 2010.
- Tips for Successfully Using Open Source Software, WHD's Spotlight: Intellectual Property Law Newsletter, Winter 2010.
- Exceed at Interactive Social Media While Avoiding, or at Least Mitigating, the Legal Pitfalls, presenter, UW E-Business Consortium Web & Multichannel Marketing Peer Group, December 17, 2009.
- Beware of Trademark Registry Scams, Wisconsin Technology Network, December 24, 2009.
- Tips for Effectively Using Your Trademarks - Build value in your marks by using them properly, Credit Union Management Magazine (CUES), July 2009.
- How proprietary is your confidential information, Wisconsin Technology Network, December 9, 2008.
- Protect Your Products Against Counterfeiting, Capital Region Business Journal, October 2008, Vol. 4, Issue 7.
- Protecting Your Brand: What Elements of Your Message and Look Are ‘Sufficiently Distinctive’?, Credit Union Management, October 2008.
- Protecting Your Brand’s Rights, bonus coverage from "Protecting Your Brand," which appeared in the October 2008 issue of Credit Union Management Magazine (CUES).
- Effective Branding with Color, WHD's Spotlight: Intellectual Property Law Newsletter, Summer 2008.
- A little due diligence can protect your trademark rights, Wisconsin Technology Network, May 14, 2008.
- Registering, Maintaining, Enforcing Trademark Rights, ipFrontline.com, May 18, 2008.