Trade Secret Litigation,
Licensing & Tech Transactions,
Dan DeCarlo is a partner in the Los Angeles office of Lewis Brisbois and co-chair of the Intellectual Property & Technology Practice. His practice focuses on intellectual property litigation.
Since 1992, Mr. DeCarlo has focused on complex business litigation concentrating on trademark and Lanham Act claims, copyright litigation, unfair competition litigation, false advertising, trade secret litigation, patent litigation, right of publicity and related business torts. He has served as lead counsel in numerous jury and bench trials and has extensive experience in all aspects of Federal Court litigation including preliminary injunctions, summary judgments and appeals to the Ninth Circuit and Federal Circuit Courts of Appeal.
In addition to litigation, Mr. DeCarlo’s practice focuses on intellectual property enforcement and counseling, including trademark prosecution, licensing and creating strategies to enhance his client’s intellectual property portfolio. He frequently lectures to business groups on intellectual property issues.
As does each lawyer in the intellectual property group, Mr. DeCarlo ascribes to a litigation philosophy which stresses comprehensive early analysis and evaluation so as to plan an aggressive and result oriented approach. The ultimate goals of the client must be thoroughly reviewed and measured against the complexity and expense of each matter.
Mr. DeCarlo served as lead counsel for Southern SARMS in a false advertising and unfair competition case brought by Nutrition Distribution, LLC. (Los Angeles Superior Court Case No. BC616482- 2016 and California Court of Appeal Case No. B 278132, 2017). Mr. DeCarlo was successful in having the case dismissed on demurrer without leave to amend. Plaintiff then appealed, and on November 28, 2017, the California Court of Appeal confirmed the trial court’s dismissal. A copy of the opinion is linked here. The Plaintiff accused our client of selling and marketing to body builders, illegal “synthetic drugs with similar effects to illegal anabolic steroids.” The Plaintiff requested injunctive relief and our client’s profits from the sale of these substances. The demurrer was based on multiple grounds including that the Plaintiff’s claims invaded the primary jurisdiction of the FDA which is the agency that governs the sale of illegal drugs and supplements. We also attacked the pleadings on the grounds that the claims sought remedies that were not viable under the causes of action plead. The Plaintiff sought damages and profits, which are not remedies available under California’s unfair competition statutes. The Plaintiff’s injunctive request, we also established, was not viable as well under the law. The Court dismissed the entire case and did not allow leave to amend and in a 3-0 decision the Court of Appeal upheld the dismissal.
In 2017, Mr. DeCarlo represented zulilly and Hemisphere Global in a copyright infringement case against, Unicolors, one of the most prolific copyright fabric plaintiffs in the country. United States District Court, Central District 16-07122. We took the position early that the case lacked merit and informed Unicolors that no monetary payment would ever be tendered and demanded a dismissal. Despite this warning, Unicolors insisted on a monetary payment for settlement up until shortly before trial. Ultimately, Unicolors dismissed the case, released our clients from any potential claims regarding sales of the so-called accused products and did so without receiving any monetary payment.
Mr. DeCarlo serves as co-lead counsel in the matter of National Shooting Sports Foundation v. State of California wherein the Firm’s client is seeking to invalidate legislation on the grounds that the legislation is impossible to comply with. The case is currently pending. On behalf of our client, we were able to establish that California recognizes that statutes that are impossible to comply with are the proper subject of a request for cancellation of that statute via a declaratory relief claim. The rule was articulated by the California Appellate Court in National Shooting Sports Foundation v. State of California, Slip Opinion F072310 (California Fifth Appellate District, December 1, 2016) which reversed the trial court’s conclusion that the separation of powers doctrine precludes a party from challenging a statute for reasons unrelated to the constitutionality of that statute. The Appellate Court held that impossibility of performance is a distinct means to challenge the validity of a statute and that the separation of powers doctrine does not preclude a challenge based on impossibility of performance.
Mr. DeCarlo served as co-lead counsel for the Firm’s client Trophy Depot, Inc. in a copyright and trademark infringement case brought by a competitor, Crown Awards. Crown Awards v. Trophy Depot, SDNY 15-cv-01178-LAK-AJP. The Plaintiff sought millions in damages stemming from the alleged infringement of dozens of alleged copyrighted works in the form of trophies. The defense centered on attacking the Plaintiff’s claim to being the copyright owner of multiple trophy designs. The trophies, we claimed, were not proprietary to Plaintiff. Through discovery and investigation we developed strong defenses that the Plaintiff systematically obtained copyright registrations for works in which they were not the owners by making material misrepresentations to the Copyright Office and then lied in deposition and discovery to cover up their lack of ownership when pressed. In addition to aggressively pursuing discovery against the Plaintiff to uncover its fraud, we issued third party discovery which further revealed Plaintiff’s fraud, perjury and lack of viable claims. As summary judgment motions were being prepared, Plaintiff abruptly dismissed its case and its then litigation counsel disassociated itself from Plaintiff, ultimately invoking New York’s “self defense” exception (New York 1.6(b)(5) of the New York Professional Rules of Conduct) when the perjury issue was brought to the Court’s attention. The District Court ultimately issued an order in which the Court recommended a criminal investigation of the matter stating, “The United States Attorney should consider whether criminal charges are appropriate.
Mr. DeCarlo prevailed in a week long bench trial in a trademark infringement suit brought against the Firm’s client Omnia Italian Design, Inc. A copy of the Court’s verdict is linked here as is an article about the trial. Our client manufactured furniture and in 2003 sold furniture to the plaintiff, Stone Creek. Stone Creek was primarily a Phoenix based retailer. The furniture sold by our client to Stone Creek was branded with Stone Creek’s name and distinctive logo. Several years later in 2008 our client sold similar furniture to a major Midwest retail chain which sold the furniture under the same trademark, namely Stone Creek. Our client authorized the use of the Stone Creek name on the furniture sold to the Midwest retailer. While the Plaintiff owned a Federal trademark registration for its trademark “Stone Creek” we were able to establish that the purchasers in the Midwest were not likely to be confused even though the trademark was the same as used by the Plaintiff. We developed evidence that the Plaintiff’s reputation had not penetrated the Midwest and that in fact, the Plaintiff’s reputation was known mostly in the Phoenix area. Before trial and through summary judgment, we were able to establish that the Plaintiff suffered no damage which then enabled us to compel a bench trial because the only remaining issues were equitable. The Court awarded a defense verdict after the Plaintiff had requested $4.45 million as a disgorgement of profit remedy.
Mr. DeCarlo represented Kelly Van Halen the ex-wife of Alex Van Halen one of the founding members of the band VAN HALEN. The Band claimed that Ms. Van Halen’s use of her last name infringed the Band’s trademark rights in VAN HALEN and also constituted dilution. The Band sought an injunction against Ms. Van Halen from using her last name as a trademark. Prior to trial, Mr. DeCarlo negotiated a favorable settlement which allows Ms. Van Halen to continue using her last name, VAN HALEN, as part of her trademarks and the Band has agreed not to oppose any efforts by Ms. Van Halen to register such trademarks anywhere in the world. Ms. Van Halen paid no money to the Band as part of this settlement.In 2012, Mr. DeCarlo obtained a reversal of the Trial Court’s denial of our client’s ANTI-SLAPP motion, resulting in a defense of the claim that our client published false and defamatory material. The decision is Direct Shopping Network v. Robert James, 2012 Cal. App. LEXIS 722.
In 2011, Mr. DeCarlo served as lead counsel for the television network HD Net and successfully obtained summary judgment against an actress and model related to claims of misappropriation of name and likeness. The Court awarded our client attorneys’ fees.
In 2011, we represented Pita Pit, a nationwide restaurant franchisor in claims by franchisees for fraud, breach of fiduciary duty and breach of contract. We obtained an arbitration ruling which enabled our client to thereafter settle the matter under confidential terms.
In 2011, we obtained for our client Trafficschool.com a significant ruling in the 9th Circuit Court of Appeals against the owners of the website DMV.ORG. At a trial in 2008, our client was awarded what is believed to be an unprecedented injunction which required the owners of DMV.ORG to display a "splash screen" warning every visitor to its site that the site is not affiliated with a governmental agency. In the opinion, the 9th Circuit Court of Appeals reversed the Trial Court's decision to not award our client its attorneys' fees. The opinion may be accessed by clicking here.
In 2011, we obtained a dismissal for our client on an issue of first impression concerning application of the Copyright Act's DMCA. Plaintiff had sued our client in California state court alleging that our client's representation in an EBAY VERO take down notice which alleged trademark infringement subjected our client to liability for various California based tort claims. We established that the DMCA was the sole statutory framework which could be applied to adjudicate alleged wrongful conduct in a take down notice, such as a VERO complaint, even if the alleged wrongful conduct was false claims of trademark infringement. The State Court dismissed the case holding that wrongful actions taken via DMCA take down notices, regardless of their content, must be brought in Federal Court under the Copyright Act.
In 2009, Mr. DeCarlo represented EWI Worldwide, a leader in the exhibit design and construction industry in a trade secret misappropriation case brought by a competitor. Early in the case, Mr. DeCarlo identified flaws in the plaintiff's position and through a cost effective approach was able to dispose of the case on summary judgment after taking only a single deposition of the plaintiff. The case is Premier Displays v. EWI Worldwide, 2009 U.S. Dist. LEXIS 11946 (C.D. Cal 2009).
In 2009, Mr. DeCarlo served as lead trial counsel for Flynt Media Corporation and its principals Jimmy Flynt II and Dustin Flynt in a jury trial brought by Larry Flynt and the publisher of Hustler. The case dealt with complex issues of trademark law and rights of publicity in the context of members of the same family utilizing a common surname in competing ventures.
In 2008, Mr. DeCarlo served as trial counsel for the Firm's client Trafficschool.com and obtained a verdict in favor of our clients for false advertising against a competitor, DMV.ORG- one of the top 300 websites in the world. The case generated a landmark injunction which forced DMV.ORG to employ a splash page warning all visitors to the site about the site's non-governmental affiliation. To read more details about the case, an article Mr. DeCarlo wrote about the case is listed below under "Awards/Publications" and a PDF link is provided.
In 2007, Mr. DeCarlo represented Evergreen Data Systems in defense of claims of breach of contract, RICO and related business torts. Our adversary demanded millions of dollars in settlement and after a multi-staged attack on the claims, including narrowing the claims through motions to dismiss, limiting the exposure through a summary adjudication motion, and then finally disposing of all potential liability through aggressive depositions of our adversary’s expert witnesses and after successful motions in limine, our client was awarded over $600,000 in attorneys’ fees and costs for the expense of defending itself.
Evergreen Data SystemsEWI WorldwideFlynt MediaHD NetHemisphere GlobalNational Shooting Sports Foundation, Inc.Omnia Italian DesignPita PitSouthern SARMSTrafficschool.comTrophy DepotZulilly