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 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 Gold band ranking – the highest possible ranking by the World Trademark Review in its annual report on the world’s best trademark professionals. In its 2018 edition, WTR 100 quoted one of Jeff’s clients, stating, “There’s no doubt that he’s one of the best in the United States for Trademark matters.”

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 also has extensive experience with Internet issues, such that in its 2018 edition WTR 1000 dubbed him “The man to go to for this.”  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 was named one of the “Top 50” law blogs by the ABA Journal in 2017.

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), An Interdisciplinary Study in Theory, Creativity, and Intersection, 1999, summa cum laude; departmental honors.

Admissions

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

Experience

Representative Matters

Notable Recent Matters

  • Advised on and drafted intellectual property assignment agreements in connection with merger of two industrial automation organizations
  • 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
  • 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

  • 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

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
THE DEVIL MADE ME DO IT
Sis Boom Bah – Supreme Court Extends Copyright Protection to Cheerleading Uniform Designs
A Trademark By Any Other Name…
New Copyright Office Electronic Registration System for DMCA Agents – Are You Ready?
"Post-Mortem Rights of Publicity: Prince Legislation in Minnesota," The Licensing Journal
PRINCE Act Shelved by Minnesota Legislator
Sign O’ the Times: the Right of Publicity Comes to Minnesota
What’s That Sound? It Might Just Be a Trademark.
Aereo’s Antenna Arrays and Streaming of Broadcast Programming to Individual Subscribers Found Infringing
Supreme Court Hears Argument in Aereo Case re Bringing Broadcast TV to the Internet
.XXXcluding Your Brand from the Online Adult Entertainment Industry

News & Press Mentions

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
Dorsey Named One of Top Trademark Firms

Events & Speaking Engagements

“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

  • Canada
  • Creative Industries
  • Educational Publishing, Technology & Services
  • Food, Beverage & Agribusiness
  • Healthcare
  • Intellectual Property Litigation
  • Technology
  • Technology Commerce
  • Trademark, Copyright & Advertising

Professional & Civic

Professional Achievements

  • International Trademark Association (INTA) – Member, Copyright Committee; Member, Titles & Characters Subcommittee (2018-19); Chair, Artificial Intelligence & 3D Copyright Subcommittee (2020-21)
  • Minnesota Intellectual Property Law Association (MIPLA) – Past Chair, Copyright Committee

Community Involvement

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

Accolades

North Star Lawyer logo

  • Recognized in inaugural edition of World Trademark Review’s Global Leaders Guide, “which brings together the world’s foremost law firm and corporate experts in trademark practice,” 2019
  • Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2016-2020
  • MSBA North Star Lawyer, 2012-2013 and 2015-2018
Jeffrey R. Cadwell