William D. Schultz

Partner
Minneapolis
3200 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
D: 612.336.4677
Contact My Assistant
Abigail Krueger
D: 612.371.5228

Education

Drake University Law School
  J.D., High Honors, 2002
  Order of the Coif
  Order of the Barristers
  Law Review
  American College of Trial Lawyers National Moot Court Competition
  National Institute for Trial Advocacy (NITA) Mock Trial Competition
  American Trial Lawyers Association Mock Trial Competition
  CALI Excellence for the Future Award in Patent Law and Intellectual Property Litigation

Drake University
  B.S. Business and Marketing, 1999
  With Honors
  Summa Cum Laude

Colegio San Cernin, Pamplona, Spain
  Spanish Language Instruction

Bar and Court Admissions

Western District of Wisconsin, 2010
U.S. Court of Appeals for the Seventh Circuit, 2006
U.S. Court of Appeals for the Eighth Circuit, 2006
U.S. District Court, District of Minnesota, 2002
Minnesota State Bar, 2002
Minnesota Federal Bar, 2002

Professional Affiliations

American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
Minnesota State Bar Association
Society of Children's Book Writers & Illustrators (SCBWI)
Minnesota Society of Children's Book Writers and Illustrators

Awards & Recognition

Senior Advocacy Award, Drake University

Honoree of the 18th Annual National Mock Trial Tournament, American Mock Trial Association

National Champion, American College of Trial Lawyers National Moot Court Competition

Best Oralist, American College of Trial Lawyers National Moot Court Competition

National Finalist, Association of Trial Lawyers of America Mock Trial Team

American College of Trial Lawyers Outstanding Oralist Award

All American Attorney Award, American Mock Trial Association

Key to the City of Des Moines, Iowa

Selected for inclusion in Minnesota Rising Stars, 2008-2013

Selected for inclusion in Minnesota Super Lawyers, 2014-2016

Publications & Speaking

Cyberworld: Protecting Your Brand in Cyberspace, co-presented a CLE with Greg Golla, September 24, 2015

Could an animal be patented? Loophole in recent decision leaves the door open, co-authored with Bette Muirhead, Lexology, June 2014

Rewriting the America Invents Act, co-authored with Joseph Dubis, Lexology, June 2014

Using U.S. Government Content, co-authored with Barbara Marchevsky, Lexology, June 2014

Tesla Is Latest Company To Open Patent Rivals, Law 360, June 2014

Social Media Patents: Obtaining, Enforcing and Defending Patents Related to Social Media Applications, Authors: William Schultz, Robert Kalinsky, Elizabeth Tunheim Sheets, John Reinan, December 13, 2013

Minnesota Settlement Stifles Patent Troll’s Licensing Attempts, Lexology, co-authored with Michael A. Erbele, September 17, 2013

MPHJ Case Is Good News For Downstream Tech Users, Law360, co-authored with Daniel W. McDonald, September 4, 2013

Knowledge Congress Competitor’s Comparative Advertising: Practical Guide and Best Practices in Winning Your Claims LIVE Webcast, August 14, 2013

Social Media Patents: Protecting Social Technology and Preventing Infringement Claims, The National Law Review, July 16, 2011

Facebook Legal Issues, presented to Student Intellectual Property Law Association (SIPLA) at the University of Minnesota, February 13, 2013

Online Copyright Protections after Viacom v. YouTube, The Magazine For The General Counsel, CEO & CFO, August/September 2012

Business forum:  Stemming the tidal wave of patent claims,” Co-authored with Daniel W. McDonald, Minneapolis StarTribune, August 4, 2012

Trademark Litigation: Online Consumer Surveys, Practical Law Company, May 2012 (co-authored Practice Note regarding use of online surveys in trademark litigation matters to assess confusion)

Takeaways From Rosetta Stone v. Google, relating to keyword advertising and trademark infringement, IP Law 360, April 23, 2012

The Relevance of Reasonable Royalties to Copyright Infringement Remedies, co-hosted ABA Roundtable discussion regarding the applicability of reasonable royalties to proving damages in copyright cases on April 3, 2012

Social Media and Your Business, co-presented at the WCCO Breakfast in Edina, Minnesota on March 29, 2012, regarding the legal implications of social media to businesses

Branding Generic Top Level Domain Names, contributed to article in Upsize Magazine branding gTLDs in October 2011

Legal Process Outsourcing, co-presented at the American Conference Institute's 5th National Forum on Reducing Legal Costs on October 22, 2010.  The presentation discussed opportunities related to near shoring, outsourcing, off-shoring, and offshore outsourcing.

Measuring Consumer Confusion through Online Surveys, a Practical Guide to Survey Acceptance, Midwest IP Institute, October 2011 (article and presentation on developing consumer perception surveys in an online environment)

Measuring Consumer Confusion through Online Surveys, Practical Guide to Survey Acceptance, co-authored paper regarding use of online surveys in trademark litigation matters to assess confusion and co-presented at Midwest IP Institute on September 22, 2011

gTLD Expansion: What Your Business Needs to Know, American Business Journal, June/July 2011 (article explaining timeline, opportunities, and requirements related to the new generic top level domain names)

Mallets at the Ready – IP Attorneys Prepare to Bead Down Brand Abuse on Expanded Domain Names, Minneapolis/St. Paul Business Journal, November 12, 2010 (contributor to article related to expansion of top level domain names)

.Name, ABA Journal, February 2009 (article discussing implications of ICANN's plans to sell an unlimited number of new top-level domain names; includes the business implications of the plan)

RIAA Tempers Tactics, National Law Journal, January 20, 2009 (article relating to the RIAA's decision to modify its litigation strategy and work with Internet service providers (ISPs) to stop copyright infringement; discusses legal issues in the Sony BMG Music Entertainment v. Tenenbaum lawsuit)

Guarding Your Work: The New Age of Intellectual Property Rights, Minnesota Society of Children's Book Writers and Illustrators winter workshop, January 10, 2009 (discussion of copyright, trademark, and online protections for authors and illustrators)

Keyword Advertising Comes with Pitfalls; Here's how to Avoid, Upsize, December 2008-January 2009 (article discussing tips for advertisers using keyword advertising on search engines such as Google and Yahoo)

Internet Enforcement - Who, What, and Where are we to Search? INTA Roundtable discussion, October 30, 2008 (discussion relating to domain name clearance, registration and enforcement, keyword advertising, and other online protection strategy)

Dell's 'Cloud Computing' Trademark Bid Sparks Debate, IP Law 360, August 2008

Domain Brand Reinforcement Offers New Challenges Post-ICANN, Intellectual Property Today, August 2008

Co-Host for ABA Roundtable Discussion regarding Software Trademark Law v. The Internet, June 2008

Leveraging and Protecting Proprietary Information Overseas: Conforming Company Culture to Operate on a Global Scale, co-presented at the American Conference Institute Strategic Intellectual Property Planning Conference in Scottsdale, Arizona on February 28, 2008

Solutions For Trademark Holders relating to Registerfly.com domain name registrar accreditation issues, IP Law 360, June 19, 2007

Protecting Intellectual Property When Representing Foreign Clients, co-presented at the American Conference Institutes Identifying and Protecting Trade Secrets Conference in San Francisco, California on June 13, 2007

Trademarks on the Internet: An Update on Metatags, Sponsored Links and Pop-Up Ads, The IP Book 4th Edition, 2006

Co-Host for ABA Roundtable Discussion regarding Software Patent Litigation in April 2006

Will Schultz is an intellectual property attorney at Merchant & Gould’s Minneapolis office whose practice focuses on Internet law, district court litigation, and post grant proceedings. His background in web development, online business, and as an entrepreneur gives him a real-world industry perspective when working with clients.

Entrepreneur

Because of his entrepreneurial bent and background as a small business owner, Will looks at legal issues through a business lens. Will operated two businesses in high school, marketed a start-up in college, and owned businesses in law school dealing with Internet publishing and domain names.

Like any results-oriented businessperson would, he asks clients to define a goal or value in pursuing or protecting intellectual property. Will enjoys coming up with creative solutions, increasing his clients' bottom line, and guiding them towards success.

Internet

While on staff in marketing at a startup Internet recruiting company for high-tech jobs during college, Will started developing and coding websites. This technical knowledge gives him an insider perspective when counseling clients on cyber legal issues like software patent litigation, disputes related to the Internet, domain names, social media issues, and keyword advertising.

Will has experience with due diligence investigations related to Internet technologies, domain name analysis, enforcement of brands and trademarks online, and analysis of contracts and privacy policies related to online services. He also has experience with management of counterfeiting and infringements on online marketplaces such as Alibaba, Amazon, and eBay. Will has authored several articles and presented seminars regarding software patent litigation, keyword advertising, Internet trademark surveys, and protecting the online intellectual property rights of authors.

Enforcement & District Court Litigation

If online enforcement measures prove to be ineffective, the next step is district court litigation. Will has successfully resolved enforcement issues, and has extensive experience in district courts with patent litigation (including utility and design patents), trademark litigation, and copyright litigation. Additionally, Will has lead ICANN arbitration proceedings relating to domain names and inter partes review and reexamination proceedings relating to software and other high-tech patents. He was named a top filer by the National Arbitration Association for 2013. Will also manages copyright litigation disputes and advises clients on methods to protect source code, books, and music.

Post Grant Practice

Since the implementation of the America Invents Act in 2013, post grant proceedings have become a powerful tool for both patent owners and challengers for determining the validity of patents. Will uses post grant review proceedings, such as inter partes review and ex parte reexamination to assist his litigation clients in defending against district court patent litigation matters. 

Outside Interests

Will serves on the recruitment and marketing committees at Merchant & Gould, and gives pro bono legal advice to low-income clients in housing court through the Volunteer Lawyer's Network. Outside of the office, Will enjoys spending time with his wife and three kids, playing hockey, trying his hand at triathlons, and supporting his kids in downhill ski racing.

Representative Cases

Federal Trademark Litigation
Initiated federal trademark litigation against motorcycle manufacturer's use of recreational sport manufacturer client's trademark. The end result stopped the defendant from using the mark and the client acquired the relevant domain name.

Domain Name Dispute
Represented publishing client in federal district court litigation action related to domain name and trademark infringement. Successfully stopped defendant from using names. In separate matters for client, initiated Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings relating to cybersquatters to successfully acquire domain names for client.

Copyright Litigation Matters
Led litigation relating to licensing disputes regarding music played in eating and drinking establishments. Successfully obtained judgments against defendants infringing on client's copyrights.

Website Audit and Terms of Use
Conducted audit of web-based company's website in relation to trademark, copyright, and privacy issues. Prepared updated terms and conditions of use in relation to website.

Brand Audit
Created brand audit form for agricultural client. Initiated world-wide trademark audits regarding key marks used by client.

Intellectual Property Teaching and Coaching

Adjunct Instructor, Communications Law, University of St. Thomas

Adjunct Professor, Intellectual Property Moot Court, University of Minnesota Law School

Coach, Giles Rich Intellectual Property Moot Court Team, University of Minnesota Law School (won National title in 2007)

Coach, American Mock Trial Association, Drake University

Areas of Focus

Software patent litigation
Computer, Domain Name and Internet Disputes
Trademark Infringement, Unfair Competition, and Counterfeiting
Trademark Counseling (Brand Audits, Website Audits, Licensing)
Copyright Litigation and Licensing

Quoted

Handling the Oncoming Tide of generic Top-Level Domain Name Disputes, JAMS Dispute Resolution Alert, August 2013

Company's 'patent trolling' will end in Minnesota after attorney general investigation, by Annie Baxter, Minnesota Public Radio, August 20, 2013

The Business of Viral Pet Images, petside.com

Instagram Alters Terms To Allow Sale Of User Photos For Ads, Law360, December 18, 2012

Tough Road For Keyword Ad Suits After Rosetta Stone Deal, Law360, November 19, 2012


MEDIA CENTER

All Media
Events
4/6/17
Cybersecurity CLE in Minneapolis
As part of our CYBERWORLD Series, join us for a complimentary CLE focusing on intellectual property law and cybersecurity, then stay for beverages and heavy appetizers at a networking happy hour in a private room at the Minneapolis Club. Cybersecurity: ...
Press Releases
10/28/16
Kyle Bass Organization, Merchant & Gould Client, Nabs First Win in Post Grant Review of Gattex® Drug Patent
Merchant & Gould is pleased to announce that its clients, Hayman Capital and the Coalition for Affordable Drugs (CFAD), secured an unprecedented win on Oct. 21, when the Patent Trial and Appeal Board (PTAB) found most claims in U.S. Patent No. 7,056,886 ...
Events
10/13/16
Cyberworld: Protecting Your Brand in Cyberspace
Please join us for a complimentary CLE focusing on intellectual property law and the ever-evolving Cyberworld Thursday, October 13, 2016 2:30-6:00 p.m. 1801 California Street Denver, CO 80202 CLE - 2:30-4:30 p.m., The New York Conference Room Cocktail ...
Events
6/8/16
Social Media CLE in Knoxville
Merchant & Gould, Moxley Carmichael, and the Tennessee Chapter of the Association of Corporate Counsel have teamed up to offer an informative CLE on managing corporate social media content. All are welcome to register by clicking the link below.Legal ...
Events
4/28/16
Cyberworld CLE in Madison
CYBERWORLD: Protecting Your Brand in Cyberspace Join us for a complimentary CLE focusing on Intellectual Property Law and the ever-evolving Cyberworld Thursday, April 28, 2016 CLE - 2:30-5:00 p.m. Brewery Tour & Beer Tasting - 5:00-6:00 p.m. Concert ...
Press Releases
2/4/16
Merchant & Gould Successfully Represents Rudolph Technologies Before Trial Court and on Appeal, Gaining Quick Affirmance of $14 Million Patent Infringement Judgment
Merchant & Gould is pleased to have represented Rudolph Technologies, Inc. in recently securing an appellate victory in a patent infringement dispute with Camtek, Ltd. over semiconductor chip inspection technology.On Feb. 1, the U.S. Court of Appeals for ...
Events
11/19/15
Will Schultz to speak about anti-counterfeiting strategies in California
Will Schultz, an intellectual property attorney and partner at Merchant & Gould, will be a featured speaker at a trademark and copyright conference in Silicon Valley on November 19, 2015.The IP Strategy Summit – Trademark & Copyright: Silicon ...
Events
9/24/15
Cyberworld CLE
CYBERWORLD: Protecting Your Brand in Cyberspace Join us for a complimentary CLE focusing on Trademark Law and the ever-evolving Cyberworld Will Schultz – Online Brand Protection and Watching, 2:00-2:30 Greg Golla – Domain Names, Advertising, ...
Articles
1/21/15
M&G Team Secures IPR Win For Medtronic Against Bosch.
On January 15, 2015, Merchant & Gould secured three significant victories for Medtronic Inc., at the Patent Trial and Appeal Board (the “PTAB” or “Board”) of the U.S. Patent and Trademark Office. In the three inter partes review ...
Articles
6/26/14
Could an animal be patented? Loophole in recent decision leaves the door open
LexologyWilliam D. Schultz, Partner Bette Muirhead, Law Clerk“For patents cannot issue for the discovery of the phenomena of nature…like the heat of the sun, electricity, or the qualities of metals, [which] are part of the storehouse of knowledge ...
Articles
6/20/14
Using U.S. government content
LexologyWilliam Schultz Barbara MarchevskyThe United States government is one of the largest publishers in the world and most of its works, by law, are in the U.S. public domain. United States copyright law under 17 U.S.C. § 105 states that U.S. government ...
Articles
6/17/14
Rewriting the America Invents Act
LexologyWilliam Schultz Joe DubisThe America Invents Act (AIA) reshaped the intellectual property landscape. As we approach the opening of Satellite Offices on September 16, 2014, it’s time to review some of the elements of AIA that have been implemented ...
Articles
6/17/14
Tesla’s opening sourcing of its patents
LexologyWill SchultzTesla’s Elon Musk opened Tesla’s patents to his rivals on June 12, 2014.  In a blog post [http://www.teslamotors.com/blog/all-our-patent-are-belong-you], Musk said “Tesla will not initiate patent lawsuits against ...
Press Releases
11/12/13
Merchant & Gould Secures Limited Damages in Appeal for Semiconductor Patent Case
Federal Circuit overturns District Court decision in favor of Rudolph Technologies Inc. Merchant & Gould, a leading intellectual property law firm, announced today that two products of its client, Rudolph Technologies Inc., were found to not infringe ...
Articles
12/18/12
Instagram Alters Terms To Allow Sale Of User Photos For Ads
Please click here to view article in which Will Schultz was quoted.
Articles
11/19/12
Tough Road For Keyword Ad Suits After Rosetta Stone Deal
Click here to view article in which Will Schultz was quoted.
Articles
4/23/12
Takeaways From Rosetta Stone V. Google
News Alerts
4/16/12
Merchant & Gould Trademark Enforcement Team Alert: Fourth Circuit Revives Rosetta Stone’s Trademark Infringement and Dilution Claims Against Google
Brand owners and Internet advertisers take note: This notice provides an overview of the Rosetta Stone v. Google decision that revives Rosetta Stone’s claim of trademark infringement and dilution against Google based on the use of trademarked ...
Articles
10/3/11
BRANDING As dot-com expands to dot-anything, owners should prepare
Click here to read article co-authored by William Schultz
Articles
9/22/11
Measuring Consumer Confusion through Online Surveys - Practical Guide to Survey Acceptance
Press Releases
8/22/11
16 Merchant & Gould Attorneys Named 2011 Super Lawyers
Firm Also Recognizes Nine Rising Stars Merchant & Gould, an intellectual property law firm, today announced that 16 of the firm's attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and ...
Press Releases
5/24/11
Merchant & Gould Client: For Your Ease Only is Paid $4.3 Million Under Settlement, Concluding 9-Year Patent Litigation Battle
Calgon Carbon Corporation Pays Settlement, Exits the Anti-Tarnish Jewelry Organizer Business, and Sends a Letter of Apology to QVC; Settlement Benefits Lori Greiner ® Jewelry Organizers Merchant & Gould, an intellectual property law ...
Press Releases
1/21/11
Merchant & Gould Promotes Three Attorneys to Partner
Intellectual property law firm Merchant & Gould is pleased to announce that it has named Jeffrey S. Ward, William D. Schultz and George C. Lewis, P.E. as partners at the firm."These three attorneys consistently demonstrate invaluable experience and ...
Press Releases
9/10/10
Merchant & Gould Scores Litigation Victory for The First National Bank in Sioux Falls
Plaintiff's 125-Year Reputation Successfully Defended and Protected Merchant & Gould, an intellectual property law firm, today announced it has won a litigation victory on behalf of The First National Bank in Sioux Falls over First National Bank South ...
Press Releases
7/26/10
26 Merchant & Gould Attorneys Named 2010 Super Lawyers
Merchant & Gould, an intellectual property law firm, today announced that 26 of the firm's attorneys are named Super Lawyers in 2010. The attorneys are recognized for excellence in intellectual property law and IP litigation. Each year, no more than ...
Press Releases
9/16/09
Merchant & Gould Scores Litigation Victory for The First National Bank in Sioux Falls
Firm Earns Permanent Injunction Against Defendant Roughly Twenty Times the Size of the Plaintiff Merchant & Gould, an intellectual property law firm, today announced it has won a major litigation victory on behalf of The First National Bank in Sioux ...
Press Releases
11/13/08
11 Merchant & Gould Attorneys Named 2009 Rising Stars by Super Lawyers®
Merchant & Gould, an intellectual property law firm, today announced that 11 of the firm's attorneys were recognized as Rising Stars by their peers according to the Super Lawyers® organization.The Rising Stars selected from Merchant & Gould ...
Press Releases
3/1/07
Merchant & Gould Coaches University of Minnesota Moot Court Team to Regional Championship
Merchant & Gould, an intellectual property law firm, announced that attorneys Rachel Zimmerman and William Schultz recently coached the University of Minnesota Law School's Intellectual Property Moot Court team to victory. The team took home top honors ...
Press Releases
3/1/06
Merchant & Gould Attorneys Coach Third Straight Winning Intellectual Property Moot Court Competition Team
Merchant & Gould attorneys Rachel Zimmerman and William Schultz recently coached the University of Minnesota Law School's Intellectual Property Moot Court competition team to victory. The competition was held on March 10-12 in Boston, Massachusetts.Zimmerman ...
Articles
1/2/06
Trademarks on the Internet - An Update on Metatags, Sponsored Links, and Pop-Up Advertisements