Dale Cendali is a nationally recognized leader in the field of intellectual property litigation, having successfully litigated and tried numerous high-profile cases, and having argued before the U.S. Supreme Court. Her practice encompasses copyright, trademark, false advertising, patent, Internet, and trade secrets law, as well as defamation, the right of publicity, privacy, complex contract disputes and similar areas, including electronic discovery. Dale heads Kirkland’s Copyright, Trademark, Internet and Advertising practice group.
In 2013, The National Law Journal selected Dale as one of the “100 Most Influential Lawyers in America.” The Journal had previously named her one of “America’s Top 50 Women Litigators,” one of the “50 Most Influential Women Lawyers in America,” and one of “The Most Influential Lawyers” for media and entertainment. Dale has repeatedly been ranked as a “top tier” lawyer by Chambers Global and Chambers USA, which describes her as “one of the best lawyers in the country” in her field who combines “intellectual acuity” with a “tough, hard-working attitude”; a “superb litigator” who “thinks quickly on her feet and vigorously defends her clients.” Euromoney Legal Media Group also named Dale as “Best in Copyright [in] the Americas” at its inaugural Americas Women in Business Law Awards in 2012 and in 2013, and in 2014 was awarded “Best in Trademark [in] the Americas.” Dale also was included in Euromoney’s Benchmark guide, “The Top 250 Women in Litigation.” Dale was also selected as one of the “20 Most Influential Women in IP Law” by Law360. Managing Intellectual Property selected Dale as one of the six “Outstanding IP Practitioners” in the United States, and named her trial victory for J.K. Rowling on the high-profile “Lexicon” fair use case as the “Copyright Trial of the Year.” IP Stars has named Dale one of the “Top 10 Women in IP.” Dale was listed as one of Lawdragon’s 500 Leading Lawyers in America in the 2013-2014 and 2014-2015 guides. The Legal 500 U.S. recognized Dale as a “leading lawyer” in the area of trademark litigation. The World Trademark Review recognized Dale as a “Trademark Experts’ Expert.” IP Law & Business recognized her as one of the “Magnificent Seven - IP’s Best Young Trial Lawyers.” Dale was selected for The Best Lawyers in America in the area of Intellectual Property Law. She also has repeatedly been named by Super Lawyers among “The Top 100 New York Lawyers” and “The Top 50 Female New York Lawyers,” and was profiled in the feature story “Truth, Justice and the Cendali Way” in the 2007 New York Metro edition of Super Lawyers Magazine. The American Lawyer profiled her as one of the high-profile lateral hires in 2009. Dale has been recognized by the Harvard Law Bulletin as one of Harvard Law School’s “Nifty 50,” celebrating 50 of Harvard Law School’s alumnae. Dale was also selected as a litigation star in the 2013 edition of Benchmark Appellate. Kirkland was named by Managing Intellectual Property in 2014 as “Trademark Contentious Firm of the Year-Nationwide.”
Dale is also an adjunct professor at Harvard Law School, teaching copyright and trademark litigation. She is also a prolific writer and has long been active in the bar. In 2010, INTA elected Dale to serve as Counsel, the highest-ranking position in the organization for an outside counsel. She also previously chaired INTA’s Dilution and Enforcement Committees. Dale was also the Vice Chair of the Copyright Division and chair of the IP Special Issues Division for the IP Section of the ABA, and currently serves on Council for the ABA IP Section. Among many other positions in the bar, Dale is also the former Chair of the Trademarks and Unfair Competition Committee of the Association of the Bar of the City of New York. In 2015 Dale was selected as an Adviser for The American Law Institute’s project, Restatement of the Law, Copyright.
For more than 20 years, Dale has tried unique, high-profile cases in state and federal courts across the country and in a wide variety of subject areas:
Argued before the U.S. Supreme Court on behalf of Twentieth Century Fox in Dastar v. Fox, a cutting edge copyright and Lanham Act case involving General Dwight D. Eisenhower’s acclaimed memoirs, having won trials below on liability and damages. The case ultimately ended with Fox obtaining a permanent injunction and a multimillion dollar award.
Represented Victoria’s Secret in a trademark suit against Victor Moseley of Victor’s Little Secret in Moseley v. V Secret Catalogue, Inc., which went up to the U.S. Supreme Court and resulted in a new dilution statute. The trademark fight started in 1998, when Victoria’s Secret sued Moseley for trademark dilution and obtained a permanent injunction against the mark “Victor’s Little Secret.” In 2003, the Supreme Court reversed and remanded the case to the Sixth Circuit. In 2006, however, Congress passed the Trademark Dilution Revision Act (TDRA). After passage of the TDRA, the U.S. Court of Appeals for the Sixth Circuit remanded the case to the district court, which again ruled in favor of Victoria’s Secret under the new TDRA. The Supreme Court refused to rehear the defendant’s appeal in March 2011, affirming victory for Victoria’s Secret. Dale was a key member of the International Trademark Association (INTA) Presidential Select Committee that helped rewrite the federal dilution statute and she played a prominent role in preparing for the Congressional hearings regarding the bill.
Won a highly publicized trademark, false endorsement and copyright fair use trial representing longtime client J. K. Rowling against RDR Publishing, bringing a halt to the proposed publication of an unauthorized Harry Potter “Lexicon.” Managing Intellectual Property named this trial “Copyright Trial of the Year” in 2009.
Led a Kirkland team that, along with co-counsel Orrick achieved a major, high-profile victory on May 9, 2014, before the U.S. Court of Appeals for the Federal Circuit on behalf of Oracle America, Inc. in Oracle America, Inc. v. Google Inc. Oracle had appealed an earlier district court opinion finding elements of Oracle’s Java application programming interfaces (APIs) uncopyrightable—APIs that Google admitted it copied in creating its Android operating system. The Federal Circuit reversed that decision, holding that both the source code of Oracle’s API packages and their structure were entitled to copyright protection as, among other things, they reflect numerous creative choices by the programmers. The decision, which has significant implications for the software industry and other companies that maintain their own software infrastructure, is receiving substantial attention from the media and is being discussed by the copyright bar as setting needed precedent on the issue of software copyrightability. Google has filed a motion for certiorari before the U.S. Supreme Court.
Successfully represented The Associated Press in a high-profile copyright fair use case suit brought by artist Shepard Fairey, in which the AP asserted copyright infringement claims arising out of Mr. Fairey’s unauthorized use of the AP’s photo of President Barack Obama to create the Obama “Hope” posters and related commercial merchandise, including t-shirts, sweatshirts and tote bags, during the 2008 presidential campaign. As a result of the AP’s discovery efforts, Fairey was eventually forced to admit attempting to destroy key documents and fabricating other documents, leading to a criminal investigation by the U.S. Attorney’s Office. Fairey and the AP later settled their dispute and the AP later won summary judgment on the fair use defense asserted by Obey Clothing, Fairey’s exclusive licensee for apparel using the “Hope” image.
Won summary judgment for a leading computer, mobile device and media player company in May 2013, defeating federal trademark infringement claims challenging the computer, mobile device and media player company’s right to use its trademark for its popular e-book reader software application. The plaintiffs claimed that the computer, mobile device and media player company willfully infringed their common law “ibooks” mark, which they alleged had been used on thousands of print and electronic books since 1999, and sought between $50 million and $1 billion in damages.
Won dismissal of all claims on behalf of Scholastic Inc. in a copyright infringement action, based on the court’s ruling that J. K. Rowling’s fourth Harry Potter book, Harry Potter and the Goblet of Fire, was not copied from “The Adventures of Willy the Wizard: No. 1 Livid Land,” a book written by Adrian Jacobs in 1987. The lawsuit, which was brought by Jacobs’s estate on behalf of his son, had sought profits from the sale of Goblet in the United States.
Won summary judgment in a trademark case for Otter Box, on the issue of priority by showing that the alleged prior use of the phrase “Lifeproof” had only been used descriptively and it had not exclusively used. Also won a preliminary injunction in a case enjoining them from using Lifeproof on iPhone cases.
Won summary judgment on behalf of The Walt Disney Company on both forward and reverse confusion in a trademark case brought by the owner of “Mr. Men” and “Little Miss” literary works. The court also granted Disney’s motion to exclude plaintiff’s flawed confusion survey.
Won dismissal for Fox Entertainment Group, Inc. of a copyright lawsuit related to the successful television series “Modern Family.” The plaintiff alleged that “Modern Family” had infringed the copyright in his treatment and proposed pilot script. Dale filed and won a motion to dismiss the plaintiff’s claims in district court, based on the lack of substantial similarity between “Modern Family” and the proposed pilot script and the lack of merit to the plaintiff’s other claims. The U.S. Court of Appeals for the Second Circuit affirmed, and the U.S. Supreme Court denied the plaintiff’s petition for rehearing of its denial of his petition for certiorari.
Won a jury trial in federal court in Art Attacks v. MGA Entertainment that successfully defended the makers of the Bratz dolls from claims that the Bratz dolls infringed plaintiff’s copyrights and trademark rights in their t-shirt designs and product names.
Won summary judgment for Tetris Holding, LLC and The Tetris Company, LLC in a copyright and trade dress case filed against Xio Interactive, Inc., a start-up company that had released a knock-off Tetris game for the iPhone called Mino. After Xio contested Tetris’ Digital Millennium Copyright Act (DMCA) take-down notice to Apple, Tetris sued Xio for infringing its copyrights and trade dress rights in the visual expression and “look and feel” of its Tetris game. The case involved novel and complex issues of copyright and trade dress law — namely, what constitutes the protectable visual expression of a video game, as opposed to unprotectable “rules” and functional elements.
Won a landmark trial on behalf of the Martha Graham Dance Center, in a case that preserved Martha Graham's dance legacy in a bitterly contested contract, fiduciary duty and intellectual property battle against the heir to Martha Graham's estate.
Representing Bath & Body Works in a declaratory judgment action in New York against Summit Entertainment, the owner of the Twilight movie series, seeking a judgment that its use of the word “Twilight” in connection with its line of “Twilight Woods” personal care products does not infringe Summit’s rights. The case settled shortly before a four week jury trial was to start.
Representing Facebook and its affiliates in multiple trademark litigations involving its businesses, including defending a preliminary injunction attempting to prevent it from using the mark Oculus Rift.
Representing major U.S. consumer products companies, both offensively and defensively, in false advertising matters, including in connection with claim substantiation, consumer surveys, and litigation.
Represented Honeywell in class actions premised on fraud on the trademark office involving the famous Honeywell Round trademark for thermostats.
Represented Colgate-Palmolive in trademark infringement litigation involving the “Total” brand, its crown jewel. On behalf of Colgate, Kirkland filed two separate suits alleging trademark infringement, unfair competition, trademark dilution, deceptive trade practices and unjust enrichment against defendants, Johnson & Johnson and Chattem Inc.
Won summary judgment in a high-profile copyright and trademark action that accused J. K. Rowling, the author of the Harry Potter books, of plagiarism. In the matter, awarded sanctions and attorneys’ fees because of claimants’ fabricated evidence.
Successfully defended the Gallo Winery from false advertising charges brought by Heublein in a case that involved the extensive use of survey experts.
Representing IBM in connection with a copyright and patent infringement case brought by CCP Systems Inc. in a case involving JScribe technology and international issues.
Successfully represented Twentieth Century Fox in a high-profile copyright, false advertising, and breach of contract lawsuit against Marvel Comics, Tribune, and Fireworks concerning the movie X-Men and television show Mutant X.
Represented Nuance Communications, a leading provider of speech and imaging solutions for businesses and consumers around the world, in several patent infringement, copyright, trademark, contract and trade secret misappropriation actions involving speech recognition and related technology, including cases in the Eastern District of Texas, Delaware, and in private arbitration.
Obtained a temporary restraining order on behalf of Trader Joe’s barring the Gristede’s supermarket chain from proceeding with its planned opening of a new store under the name “Gristede’s Trader John’s” and using trade dress that copied the distinctive Trader Joes’ style; the case settled on favorable terms shortly thereafter.
Secured a favorable settlement for License Management Co. during the second week of an expected three-week bench trial in the District of Connecticut in a case involving breach of fiduciary duty and corporate opportunity claims, and license rights to the world-famous “Swiss Army” branded products and trademarks.
Successfully represented J. K. Rowling in numerous intellectual property disputes nationwide, including a highly publicized copyright infringement action brought against the New York Daily News involving the premature release of excerpts of the fifth Harry Potter book.
Represented and advising Lionel LLC in all of its intellectual property litigation, and in developing, protecting and enforcing its intellectual property rights, including assisting to secure the reversal of a $40 million adverse judgment on trade secret claims that threatened the company with bankruptcy, and successfully resolving a high-profile trademark dispute against Union Pacific train line.
Won summary judgment for Twentieth Century Fox in a copyright infringement matter brought by the purported owner of the photograph allegedly used to create the “I WANT TO BELIEVE” poster in Fox Mulder’s office on The X-Files.
Successfully represented Time Warner Entertainment and related companies, such as Time Inc. and Home Box Office, in a variety of matters including a major fraud in the inducement contract case and the successful defeat of a preliminary injunction involving Time’s expansion of its “Real Simple” line of products.
Led a team in obtaining a unanimous federal jury verdict in favor of the American National Theatre, a nonprofit theatre organization in New York, in a trademark infringement case brought by ANTA, another nonprofit theater organization, over the right to the American National Theatre mark.
Representing numerous companies in the confidential planning and launch of new products, services and brands on a world-wide basis.
Obtained transfers of domain names pursuant to both the ICANN dispute resolution procedures and the Anticybersquatting Consumer Protection Act and counseling on Internet issues in general.
Defeated as a prior restraint O. J. Simpson’s attempt to enjoin broadcast of the Simpson/Brown wedding video and later obtained a demurrer of the suit as failing to state a claim under privacy and unfair competition law.
Memberships & Affiliations
American Bar Association
IP Section of the American Bar Association (Chair of Division IV - IP Special Issues; Vice Chair of Division III - Copyrights; Former Chair of the Copyright Litigation Committee)
Litigation Section of the American Bar Association (Former Chair of the IP Committee; Former Division Chair)
New York State Bar Association (Media Law Committee; IP Committee; Cyberlaw Committee)
Association of the Bar of the City of New York (Trademarks and Unfair Competition Committee (Former Chair); Communications and Media Law Committee; Copyright and Literary Property Committee)
International Trademark Association (Former Counsel; Former Chair of Trademark Enforcement Committee; Former Chair of the Dilution Committee; Former Member of the Presidential Select Task Force on Dilution)
"Gray Markets: Importation Rights v. the First Sale Doctrine," PLI’s Enforcement & Litigation 2013, February 1, 2013 (co-author)
"Hey, Those Bits Are Mine: Evolving Theories of Liability in 'Web Scraping,'" PLI’s Social Media 2104, February 26, 2014 (co-author)
"Current Controversies in Trademark Infringement Remedies: Profits and Damages, Injunctive Relief and Attorney Fees Under the Lanham Act," ABA Spring Meeting 2014, April 4, 2014 (co-author)
"New Trends in U.S. Trademark Litigation Involving Chinese Companies," New York Law Journal, February 27, 2012 (Co-Author)
"Why Trademark and Copyright Counsel Should Heed the Patent Precedent of the Supreme Court," Landslide, November/December 2009
"Copyrights and Wrongs," The Economist on-line debate on proposed revisions to copyright law, May 2009 (Opinion Author)
"Copyright Litigation" chapter in Successful Partnering Between Inside and Outside Counsel (Robert L. Haig, ed., 1st ed., Fall 2000 and 2008 Supp. by West Group and ACA) (First Author)
"Eight Steps to a Powerful Opening," 26 Communications Lawyer 11 Nov. 2008 (First Author)
Moseley v. V Secret Catalogue, Inc.: One Answer, Many Questions, 93 The Trademark Law Reporter 833, 2003 (First Author)
"How to Ensure Your Website Complies with Consumer Protection Laws," Internet Law & Business, October 2002
"Trademark Protection and the Internet," UCLA Symposium and INTA Annual Meeting, 2001
"Electronic Discovery," PLI's Fourth Annual Internet Law Institute, June 2000
"An Overview of Intellectual Property Issues Relating to the Internet," 89 Trademark Reporter 485, 1999 (First Author)
"The Internet and Jurisdiction: The International Experience," The Computer Law Association Bulletin, Vol. 14, No. 2 1999 (Co-Author)
"Personal Jurisdiction in Cyberspace," The New York Law Journal, July 20, 1998 (First Author)
"How to Protect Your Intellectual Property on the Internet?" Price Waterhouse Leadership Conference, 1998
"Freelancers Reeling In Fight Over Online Rights: Tasini v. The New York Times," The National Law Journal, October 20, 1997
"Personal Jurisdiction and the Internet," PLI's Annual Internet Law Institute, 1997 and 1998
"Net Use Raises Issues of Jurisdiction," The National Law Journal October 28, 1996 (First-Author)
"You Name It: To What Extent Can A Surname Be Used As A Trademark?" Los Angeles Daily Journal and the San Francisco Daily Journal April 25, 1996 (Co-Author)
"In Lotus, The 1st Circuit Departed From Precedent, Narrowing Protection For Developed Software And Giving Crafty Litigators A Blank Disk On Which To Write," The National Law Journal May 15, 1995 (First-Author)
"The Book Publishing Industry: Intellectual Property, Privacy, Libel and Contract Issues," The Texas Bar Association, March 1995
"Other Methods of Proof," The New York Bar Association's Practical Evidence Program, December 1994
"Computer Interfaces Test Copyright Law's Scope," The National Law Journal, October 31, 1994 (First-Author)
"Lotus Case Highlights Copyright Issues and High-Tech Problems," The National Law Journal, November 1, 1993 (Co-Author)
"Book Publishing," University of Houston Law Foundation and University of California at Davis School of Law, July 1993 and July 1994
"Federal Preemption of State Dilution Statutes," The New York Law Journal, April 12, 1993 (Co-Author)
"Sega Case Suggests Protection Strategies," The National Law Journal, January 18, 1993 (Co-Author)
"Ferrari Case Shows Collision of Competing [Trade Dress and Patent] Protection Concepts," The National Law Journal, October 12, 1992
"Fact-Compilation Ruling May Hinder [Copyright] Protection," The National Law Journal, June 17, 1991
"The Work for Hire Doctrine After CCNV v. Reid," New York State Bar Journal, July 1990 (Principal Co-Author)
"Enjoining A Tender Offer for Misuse of Confidential Information: Is It A Show-Stopper or Can The Bidder Cure?" The Journal of Proprietary Rights [December 1989 (Part I); January 1990 (Part II)] (First Author), abstract reprinted in The Bowne Digest for Corporate & Securities Lawyers (April 1990)
"Representing The Employee In A Trade Secret Case," The Corporate Analyst, August 1989 (First Author), Reprinted in The Corporate Counsel's Guide to Protecting Trade Secrets
"In Search Of Truth, A Review of Renata Adler's Reckless Disregard," 15 Northern Kentucky Law Review 227, 1987
"Entering and Leaving the Employer-Employee Relationship, Planning For Possible Litigation, Strategic Aspects of Litigation," Trade Secret Law Reporter, Vol. II, Nos. 10-11 (1987)
"Of Things To Come–The Actual Impact of Herbert v. Lando and a Proposed National Correction Statute," 22 Harvard Journal on Legislation 441 (1985), Partially reprinted in M. Franklin, Cases and Materials on Mass Media Law 293-295 (3d Ed. 1987)
"Smashing the Glass Ceiling," Managing Intellectual Property International Women’s Leadership Forum; June 6, 2014
"Hot Topics & Recent Developments in Trademark Law," City Bar Trademark Talk; May 20, 2014
"Hollow Remedies: Insufficient Relief under the Lanham Act," ABA’s 29th Annual Intellectual Property Law Conference; April 2-4, 2014
"Copyright Enforcement Update: Fair Use and Grey Market Goods," Practicing Law Institute; February 2, 2013
"Copyright Law and Practice in Canada Now: Analysis and Implications of the new Legislation and Latest Supreme Court Rulings," Insight Information; December 3-4, 2012
Gave legal opinion regarding the Mario Puzo/Paramount dispute on CNBC's Closing Bell; August 30, 2012
Interviewed by Joel Rose on NPR's All Things Considered about the Shepard Fairy case; May 10, 2012
CLE Presentation, "Recent Developments in Copyright Law," Time Warner; April 19, 2012
"US Enforcement of Important Copyright Assets," Practicing Law Institute; March 28, 2012
"Hot Topics in Intellectual Property: Protection of Fictional Characters," New York City Bar, Committee on Trademarks and Unfair Competition, Committee on Copyright and Literary Property; March 19, 2012
"Disruptive Technology: Digital Media & Its Effects on the Publishing World," International Alliance of Research Universities (IARU) Tech Series; March 8, 2012
"Battlefield Fair Use: Lessons learned from the Harry Potter Lexicon and the Shepard Fairey case and the current Appropriation Art Debate," ALAI Canada Toronto Luncheon at Heenan Blaikie; January 13, 2012
"The Effect of Supreme Court Patent Jurisprudence on Copyright Law," ABA Section of Intellectual Property Law, Annual Intellectual Property Law Conference; April 2009
"That's All Well and Good, But How Do We Prove It? Evidence and Hot Substantive Issues," 2009 Mid-Winter Institute, AIPLA; January 2009
"Copyright Considerations for User Generated Content," American Intellectual Property Law Association, Annual Meeting; October 23, 2008
"Making Rain: Taking the Lead in Bringing in Business," Celebration 55: The Women's Leadership Summit, Harvard Law School; September 2008
"First Chair: Trying Intellectual Property Cases," American Bar Association, Annual Meeting: Commission on Women in the Profession -- Day of Equality; August 7, 2008
United States Supreme Court
United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Second Circuit
United States Court of Appeals for the Third Circuit
United States Court of Appeals for the Sixth Circuit
United States Court of Appeals for the Ninth Circuit
United States Court of Appeals for the Eleventh Circuit (inactive)
United States District Court, Northern District of New York
United States District Court, Southern District of New York
United States District Court, Eastern District of New York
United States District Court, Eastern District of Michigan
United States District Court, Northern District of California
New York, Appellate Division, First Department
New York, Appellate Division, Second Department