Dale Cendali, P.C.

For more than 30 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 Lucky Brand in Lucky Brand Dungarees v. Marcel in a case involving allegations of trademark infringement and federal preclusion principals. In a 9-0 opinion, the court found in favor of Lucky Brand.
• 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. The team later defeated Google’s petition for certiorari before the U.S. Supreme Court.
• Won jury trial for 2K Games and its parent company in a lawsuit alleging that they committed copyright infringement by accurately depicting tattoos inked by the plaintiff on certain NBA players in their NBA 2K video game. After only 90 minutes, the jury found that, when the players were inked, they received a license to be depicted and authorize their depiction in media. Prior to the trial, won a motion to dismiss the plaintiff’s claims for unjust enrichment and for a declaratory judgment that Take-Two should have credited the plaintiff for creating the tattoos, and summary judgment dismissing four tattoos due to knowing inaccuracies in the plaintiff’s copyright registrations.
• Represented seven members of the Association of American Publishers in a copyright infringement lawsuit seeking to enjoin Audible Captions, a service that provides audiobook consumers the entire, machine-generated text of literary works. The parties resolved the litigation with a permanent injunction being issued and Audible agreeing that it will obtain permission from AAP’s members before moving forward with the service for their works.
• Represented PepsiCo in a high-profile trademark dispute brought by Rise Brewing challenging PepsiCo’s use of the trademark “Mountain Dew Rise Energy” for its carbonated, fruit-flavored energy drink. After the district court entered a preliminary injunction that required PepsiCo to stop sales of products with the disputed packaging, PepsiCo hired Kirkland to handle the expedited appeal and ongoing district court litigation. In a unanimous opinion, the Second Circuit reversed and found that the district court abused its discretion by enjoining PepsiCo’s use of the Mountain Dew Rise Energy mark. The court also agreed with PepsiCo’s position that the plaintiff’s trademark is entitled to limited protection and that the plaintiff is not likely to succeed on the merits of its claim. Back in the district court, Kirkland secured a complete victory, winning summary judgment in PepsiCo’s favor on all of Rise Brewing’s claims.
• Won motion to dismiss, and affirmance thereof, of copyright litigation for Nike in copyright litigation alleging that Nike’s famous “Jumpman” logo and photograph of Michael Jordan infringed plaintiff photographer, Jacobus Rentmeester’s rights. Also defeated Rentmeester’s motion for rehearing or rehearing en banc to the Ninth Circuit and certiorari petition to the U.S. Supreme Court. The Ninth Circuit’s opinion has become the court’s leading decision on substantial similarity and meaningfully clarified issues such as the inverse ratio rule.
• Won summary judgment, obtained permanent injunction, and prevailed on appeal for Fox News in a copyright infringement action against a media monitoring service, TVEyes. The Second Circuit held that permitting users to view video clips of telecasts was not fair use and constituted volitional conduct leading to direct infringement liability.
• Defeated preliminary injunction motion against Equinox Holdings in a trademark infringement lawsuit brought by Equinox Hotel Management over plans to extend Equinox lifestyle brand into line of luxury hotels.
• Represented Delta Airlines in litigation brought by American Airlines, claiming that Delta’s use of the word “flagship” to describe its aircraft and airport lounges constituted infringement of American’s registered trademarks that included the word "flagship." Kirkland, on behalf of Delta, opposed American’s claims and sought declaratory judgment of invalidity and noninfringement, as well as the cancellation of the marks on the grounds that the term was either descriptive or generic. After the judge moved the trial forward with only one week’s notice, Kirkland marshalled the resources of attorneys and staff from across practices and offices to secure a favorable settlement just one day before the jury trial was scheduled to begin, ending the parties’ dispute.
• Won summary judgement for 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.
• Trial victory before the ITC (International Trade Commission) in a high profile case in which Kirkland and its co-counsel represented Converse in a trademark proceeding against more than thirty companies.  Converse sought an exclusion order excluding knockoff shoes that infringe Converse’s iconic “Chuck Taylor” shoe design from entering the United States.  Many respondents settled before trial and default judgments were entered against several foreign manufacturer respondents.  Converse proceeded to trial against four respondents -- Wal-Mart, New Balance, Skechers and Highline United -- and prevailed.  The judge determined that Converse’s trademark is valid and that each of the defendants infringed, and recommended a general exclusion order as to all infringing shoes and cease and desist orders against each defendant.  Featured in the Law360 article: Converse Claims ITC Win Against Wal-Mart Over Chuck Taylors (Nov. 17, 2015).
• 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, 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 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 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 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.
• Successfully defended Glaxosmithkline against a preliminary injunction regarding allegedly false advertising of Flonase® Allergy Relief in McNeil-PPC, et al. v. Glaxosmithkline Consumer Healthcare L.P.
• 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 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 defeating a preliminary injunction attempting to prevent it from using the mark Oculus Rift.
• Represented Travelers Indemnity Company in federal lawsuit against Legal & General Group PLC and its affiliates, in which Travelers asserted that L&G's use of its multi-colored umbrella logo infringed Traveler's rights in its famous red umbrella logo.
• 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 (Scholastic Inc. v. Stouffer) 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.