Phil Cardinale is a partner in the firm’s Technology Transactions and Intellectual Property Practice Group.
Phil has broad experience in intellectual property rights asset management, transactions, litigation, and counseling in matters that involve trademark, trade dress, copyright, privacy/publicity rights, e-commerce, social media, and design law. He has held leadership positions in several intellectual property and technology-related professional organizations, including as an American Bar Association Liaison to the World Intellectual Property Organization, a specialized agency of the United Nations, and has chaired two ABA copyright committees and vice chaired a trademark committee. He is also recognized by the North Carolina State Bar Board as a certified Trademark Specialist.
Phil also has significant experience asserting and defending intellectual property claims before the judiciary and multiple agency forums, including the Trademark Trial and Appeal Board, Copyright Board of Review and Copyright Royalty Board, and International Trade Commission, as well as alternative dispute resolution settings. In the transactional part of his practice, he also advises technology-centric companies in all phases of growth on the management, development, commercialization and protection of their intellectual property assets and assists on licensing and other strategic transactions. Phil helps clients with the preparation and negotiation of the full range of technology and commercial contracts commonly encountered by technology clients. Phil has frequently represented clients in retail, hospitality, startup, and software fields, including a wide spectrum of creative-sector clients in fashion, entertainment, gaming, music, and furniture design.
Prior to joining Smith Anderson, Phil worked in the intellectual property group of the Washington, DC office of a large international firm. He also holds a Ph.D. from Oxford University in English Literature, was formerly a college teacher and print journalist, and has published peer-reviewed articles in several academic fields.
Professional & Community Affiliations
- American Bar Association, Intellectual Property Section
- Liaison, World Intellectual Property Organization, SCCR (2012-Present)
- Vice Chair, Trademark Litigation Committee (2019-Present)
- Past Chair, Copyright Office Affairs Committee (2017-2019)
- Past Chair, Copyright and Emerging Technologies Committee (2010-2012)
- International Trademark Association
- Internet Committee (2019-Present)
- Copyright Committee (2016-2019)
- The Counsellors (Washington, DC)
- Board of Directors
- President (2018-2019)
- Other Officer Positions (2015-2018)
- The Cinema, Inc. (Raleigh, NC)
- Board Member / Historian
- Member, Rotary Club of Raleigh
- Y Guides
- Teacher, North Carolina Science Olympiad
- North Carolina Bar Association
Honors & Awards
- Outstanding Leadership Award, American Bar Association Intellectual Property Law Section
- Burton Award for Excellence in Legal Writing
- North Carolina Pro Bono Honor Society
Advised an eco-friendly startup company in agreements to sell certain business assets while enlisting the buyer as its long-term representative for future licensing of its patented technology in select markets.
Advised a contract research organization on intellectual property issues in a definitive agreement to acquire a specialized contract research organization for the biotechnology industry.
Advised a startup company in a long-term strategic collaboration with a multinational technology company to develop and market a software platform to healthcare providers and pharmacy teams for reviewing pharmaceutical inventories on hand and identifying clinical alternatives for drugs that are in short supply.
- Assisted a multinational Fortune 50 telecommunications company in negotiating and drafting a collaboration agreement for the creation of a video game service and related content.
- Assisted numerous Fortune 50 international retailers in the creation of product development and intellectual property clearance protocols and related risk management and licensing strategies.
- Advised various companies on the creation and maintenance of a broad array of master services agreements and intellectual property licenses.
- Advised a national travel company in its acquisition of a restaurant chain and subsequent rebranding strategies.
- Advised a semiconductor and LED company on the divestiture of its lighting products business unit for an initial cash payment of $225 million plus the potential to receive an earn-out payment based on the business’s post-closing performance.
- Counseled start-up companies on best practices for developing and commercializing their intellectual property and establishing protocols to protect trade secrets.
- Litigated on behalf of major U.S. corporations before the judiciary and several federal agencies, including the Trademark Trial Appeal Board, Copyright Royalty Board, and International Trade Commission, on intellectual property and technology issues.
- Monitored legislative and regulatory developments relating to intellectual property, data privacy and Internet governance, and advised clients on government relations and compliance on these issues.
- Assisted several global fashion retailers in international copyright, trademark, publicity rights, product design and domain rights enforcements.
- Represented international non-profit organizations in the creation and implementation of policies and strategies relating to intellectual property, asset management, co-ventures and trademark and copyright licensing.
News & Publications
- Smith Anderson Attorney Appointed Vice Chair of ABA Intellectual Property Section’s Trademark Litigation Committee06.06.2019
- American Bar Association Intellectual Property Law Section Honors Phil Cardinale with Leadership Award04.18.2019
Bar & Court Admissions
- North Carolina
- District of Columbia
- New York
- New Jersey
- Supreme Court of the United States
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Eastern District of North Carolina
- U.S. District Court for the Middle District of North Carolina
George Washington University, J.D., 2007
University of Oxford, Ph.D. (2004), M.A., English, with highest honors (2000)
Georgetown University, B.A., Classics, cum laude, 1996