Jeffrey R. Cadwell
PEOPLE

Jeffrey R. Cadwell

Partner
cadwell.jeffrey@dorsey.com

Overview

COMPANIES CALL ON JEFF TO SELECT, PROTECT, ENFORCE, AND COMMERCIALIZE THEIR BRANDS AND IDEAS.

Jeff is the co-chair of Dorsey’s Creative Industries and Video Game groups. He has a multidimensional practice and a diverse client base, but his objective is constant: to help clients fully take advantage of their intellectual property in order to grow their business. For some clients, that means providing copyright advice (including analysis of fair use and digital content issues) and obtaining copyright registrations. For others, it means advising clients on the availability, registrability, and strength of proposed trademarks in the United States and abroad. These same clients rely on Jeff to develop strategies for protecting and enforcing their trademark and copyright rights. His rigorous advocacy for trademark clients has led to his WTR 1000 and WTR Global Leaders rankings by the World Trademark Review in its annual report on the world’s best trademark professionals. The WTR has hailed Jeff for his “excellent attention to detail, responsiveness and unparalleled communication skills.” WTR has also quoted one of Jeff’s clients, stating, "Jeff is simply the best and his services are top notch. He goes above and beyond to provide strategic, practical and cost-effective advice." Because of Jeff’s music background, he can offer clients the rare combination of trademark and copyright expertise and first-hand experience.

An important element of Jeff’s practice involves helping clients commercialize their brands and ideas. Whether through license agreements, sponsorship agreements, personality license agreements, publishing agreements, entertainment and media agreements, Jeff is a strong negotiator and effective advocate, and clients trust him to deliver the best deal possible.
Jeff has particular expertise in clearance and protection of marks in the music and pharmaceuticals industries.  He has worked on a number of branding projects for new pharmaceutical products. Jeff also has extensive experience with Internet issues. He is skilled at domain name acquisition and enforcement, Uniform Domain Name Resolution Policy (UDRP) proceedings, takedown notices under the Digital Millennium Copyright Act (DMCA), termination of email accounts and domain names used for fraudulent purposes, and other cybersquatting and cyberpiracy issues.

Finally, Jeff’s practice involves consulting on transactions like mergers and acquisitions or secured financings. Intellectual property can play a major role in these deals, and Jeff ensures that Dorsey’s clients’ rights and interests are protected.

Jeff is a contributor to Dorsey’s critically-acclaimed IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. TheTMCA.com and the Firm’s Trademark Practice Group have been recognized in JD Supra’s 2022 Readers’ Choice Awards. Jeff is a co-editor of Dorsey’s video game law newsletter entitled “Dorsey Legal Arcade.”

Education & Admissions

Santa Clara University School of Law (J.D., 2006), magna cum laude; Order of the Coif; High Tech Law Certificate; Senior Technical Editor of the Santa Clara Law Review

University of Minnesota, Twin Cities (M.A., 2001), Music Composition

Drake University (B.M., Individualized Major, 1999), An Interdisciplinary Study in Theory, Creativity, and Intersection, summa cum laude; departmental honors.

Admissions

  • Minnesota
  • California
  • U.S. District Court for the District of Minnesota

Experience

Representative Matters

Notable Recent Matters

  • Drafted content license agreement relating to court decisions and legal research materials.
  • Negotiated and drafted several production and licensing agreements for a film series focused on Indigenous rights.
  • Successfully petitioned the USPTO to allow use of a “care of” address in trademark filings by two well-known musicians.
  • Drafted agreement for commissioning of a sculpture of a famous individual.
  • Drafted agreement for hosting of a television series by celebrity.
  • Drafted agreement for use by game developer in creation of online games to be used in connection with publicizing musicians and bands.
  • Advised on sale of a non-profit organization's intellectual property assets to a for-profit organization.
  • Drafted contribution agreements for use by music criticism website when engaging with authors.
  • Negotiated license agreement between local organization and national chapter to ensure adequate protection of pre-existing trademarks.
  • Drafted sponsorship agreement between professional athlete and sporting goods manufacturer.
  • Advised online publishing company on complex copyright issues.
  • Negotiated publishing agreement and ancillary agreements for Vice President Mondale’s autobiography.

Notable Recent Enforcement Matters

  • Mayo Foundation for Medical Education and Research v. Reiner Ryan / All Coin Central (achieved transfer of a domain name that was being used in connection with a fraudulent employment scam).
  • Convinced a brewery to cease use of a famous song title as the name of a craft beer.
  • Christopher Breaux aka Frank Ocean v. TDA Ltd. (achieved transfer of a domain name for musician Frank Ocean that was being used to sell counterfeit merchandise).
  • Secured payment and license relating to unauthorized use of a musical track in a major motion picture.
  • Achieved removal of counterfeit merchandise listings from Etsy, Amazon, eBay, and other sites for numerous clients in the entertainment industry.
  • Long Meadow Ranch Partners, LP v. Katleski et al. (N.D.N.Y.) (negotiated a settlement with the defendant to phase-out use of a confusingly-similar trademark).
  • International Barrier Technology, Inc. v Hoover Treated Wood Products, Inc. (obtained transfer of a domain name corresponding to a client’s trademark that was registered to a competitor).
  • Impact Applications, Inc. v. CNS Vital Signs and NCS Pearson, Inc. (W.D. Pa) (won motion to dismiss copyright and trademark claims on grounds of fair use).
  • Radisson Hotels International, Inc. v. 1 1 / 1 (client awarded transfer of domain name from cybersquatter who tried to mask bad faith by having domain resolve to client’s own website).
  • Radisson Hotels International, Inc. v. Radisson Travels (obtained transfer of domain name that was being used to offer travel reservation services).
  • Delta Air Lines, Inc. v. WhoisGuard and 3D (client awarded transfer of domain name from cybersquatter in UDRP proceeding).
  • Regents of the Univ. of Minnesota and NCS Pearson v. Andrew Dobson, Kazan Corp. and KazServ, Inc. (SDNY) (secured consent judgment against individual who posted copyrighted materials on websites).
  • Radisson Hotels International, Inc. v. Ron Schumaker (obtained domain name from cybersquatter in UDRP proceeding).

News & Resources

Articles

Copyright Office Provides Guidance on Registration of AI-Created Material: Human Authorship Still Necessary
Dorsey Legal Arcade: Video Game Industry Legal Updates Volume 1, Issue 4
Small Claims, Big Questions: The New Copyright Claims Board Gets Its Debut
Dorsey Legal Arcade: Video Game Industry Legal Updates Volume 1, Issue 3
A Cautionary Tale of One Independent Press’s Claim of Federal Copyright Protection
Dorsey Legal Arcade: Video Game Industry Legal Updates Volume 1, Issue 2
Dorsey Legal Arcade: Video Game Industry Legal Updates Volume 1, Issue 1
Highlights Part II of the Trademark Modernization Act of 2020: Ex Parte Expungement, Ex Parte Reexamination, and Non-Use Cancellation of Federal Trademark Registrations
Washington Football Team to Change Its Name: Some Lessons on How Not to Get Sacked
USPTO to Fast Track COVID-19 Technology Patents for Small and Micro Entities, Without Additional Fees
Not So Peachy in Georgia: Supreme Court Holds Annotated Code Not Eligible for Copyright Protection
USPTO and Copyright Office Extend Filing Deadlines Under Cares Act (COVID-19 Emergency)
Shiver Me Timbers: Can the States Now Legitimately Hornswoggle Copyright Owners?
Music Licensing
Music Public Performance Rights: Ignore That Licensing Offer from ASCAP or BMI at Your Peril
Time to Face the .MUSIC
Ahoy, matey! The Supreme Court to Decide Whether Copyright Owners Can Make States Walk the Plank for Infringement
The Public Domain Opens Again in the United States for the First Time Since 1998
The Second Circuit Shuts Down Application of First Sale Doctrine
U.S. Takes Marrakesh Express to Treaty Facilitating Access to Publications by the Blind and Visually Impaired
BREAKING NEWS: The Supreme Court Finally Will Resolve the Copyright Registration Circuit Split
Tune Up: Initial Lessons from Gibson’s Most Recent Trade Dress Lawsuit
DMCA Agent Registration Reminder
Don’t Get Berned – An Important Limitation on Enforcement of Foreign Copyrights Under U.S. Law
KISS That Trademark Application Goodbye

News & Press Mentions

Dorsey’s Trademark Lawyers and Offices Ranked in 2024 World Trademark Review 1000
Dorsey’s Trademark Lawyers and Offices Ranked in the 2023 World Trademark Review 1000
Jeffrey Cadwell Discusses Hosting a World Cup Party Legally
Dorsey’s Trademark Lawyers and Offices Ranked in World Trademark Review 1000
Dorsey’s Trademark Lawyers Ranked in World Trademark Review Global Leaders Guide
Dorsey’s Trademark Lawyers Ranked in World Trademark Review 1000
Dorsey’s Trademark Lawyers Ranked in World Trademark Review Global Leaders Guide
Dorsey Partner Jeff Cadwell Comments on Copyrighting State Code
Dorsey’s Trademark Lawyers Ranked in World Trademark Review 1000
Dorsey’s Trademark Lawyers Ranked in World Trademark Review Global Leaders Guide
Jeff Cadwell Gives Sneak Peek on Program He’s Moderating at INTA Annual Meeting
Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review
Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review
Dorsey Partner Jeffrey Cadwell Discusses Super Bowl Trademark
Dorsey Partner Jeffrey Cadwell Comments on Star Athletica v. Varsity Brands
Dorsey’s Trademark Lawyers Honored in World Trademark Review 2017
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
Dorsey Represents Underwriters in Tactile Medical IPO
Dorsey Partner Jeffrey Cadwell Comments on Proposed PRINCE Act
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Jeffrey Cadwell and Evan Everist comment on .law and .legal gTLDs in World Trademark Review
Dorsey & Whitney Represents Entone in Acquisition by Amino
Dorsey Represents Hillerich & Bradsby in Sale of Louisville Slugger Brand
William Mitchell College of Law and Hamline University School of Law will combine
Dorsey & Whitney Names New Partners

Events & Speaking Engagements

Co-Speaker, "IP in Indian Country: How to Protect & Enforce Your Rights", Hot Topics in Indian Law
Seminar Playback: Hot Topics in Indian Law
Panelist, “Right of Publicity: The Life and Times of a Professional Football (Soccer) Player,” International Trademark Association Annual Meeting, Washington, D.C.
Co-Speaker, “Protecting your marks: Smart watching strategies for the digital era.” CompuMark
“The Digital Distribution Revolution: Video Games and Esports,” New York State Bar Entertainment, Arts, and Sports Law Annual Meeting, New York
“Work for Hire Considerations Under Copyright Law,” Fasken Video Game Industry Forum, Montreal
“Character Wars: Trademark and Copyright Protection for Fictional Characters,” International Trademark Association Annual Meeting, Boston
"Licensing and Litigation Pitfalls in the U.S. Videogame Industry… and How to Avoid Them," Fasken Video Game Industry Panel, Montreal
Intellectual Property Webinar Series: Beyond Cheerleaders and Shovels: Leveraging Copyright Protection for Design Features
Webinar Playback: Beyond Cheerleaders and Shovels: Leveraging Copyright Protection for Design Features
Webinar Playback: Protecting Your Brands in Food, Beverage and Agriculture
"Annual Review of United States Media and Entertainment Law Cases," Ontario Bar Association, Toronto
"Copyright Law in the Digital Age," Society for Marketing Professional Services
"Thou Shalt Not Steal and Other Lessons of Copyright Law for Church Musicians," 2008 Annual Festival of the Area VII chapter of the American Guild of English Handbell Ringers (AGEHR), Sioux Falls, South Dakota

Industries & Practices

Educational Publishing, Technology & Services
  • Advertising & Marketing
  • Artificial Intelligence
  • Canada Cross-Border Transactions
  • Creative Industries
  • Educational Publishing, Technology & Services
  • Food, Beverage & Agribusiness
  • Healthcare & Life Sciences
  • Intellectual Property
  • Intellectual Property Litigation
  • Technology
  • Technology Commerce
  • Trademark, Copyright + Advertising
  • Video Games

Professional & Civic

Professional Achievements

  • International Trademark Association (INTA) – Member, Copyright Committee [Titles & Characters Subcommittee (2018-19); Chair of Artificial Intelligence & 3D Copyright Subcommittee (2020-21); Enforcement and Anti-Piracy Subcommittee (2024-25)]; Member, Right of Publicity Committee [Sports, Actors, and Celebrities Subcommittee (2022-23)]
  • Copyright Society of the USA – Member; Board of Trustees (2022-present); Midwest Chapter Co-Chair
  • Minnesota Intellectual Property Law Association (MIPLA) – Past Chair, Copyright Committee
     

Community Involvement

  • American Composers Forum – Board of Directors (2015-2021)
  • Wesley Foundation at the University of Minnesota – Board of Directors (2013-19), served as Chair (2015-18)

Accolades

  • Who's Who Legal: IP – Copyright, 2021, 2023
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2016-2024
  • Recognized as a Global Leader in World Trademark Review’s Global Leaders Guide: Private Practice, 2019-2024
  • Dorsey & Whitney – Scales of Justice Team Award (The World Ventilator Foundation), 2021

    North Star Lawyer

  • MSBA North Star Lawyer (recognizing pro bono service), 2012-2013 and 2015-2020
Jeffrey R. Cadwell