Daniel C. DeCarlo

Partner

Dan DeCarlo is a partner in the Los Angeles office of Lewis Brisbois and chair of the Intellectual Property & Technology Practice. Dan has been with the Firm since 1997 and his practice focuses on intellectual property and complex business litigation. In his nearly 30 years of practice, Dan has earned a reputation as one of the most formidable litigators and trial attorneys in Los Angeles.

In 2020, Dan was recognized as one of the top litigators and trial lawyers in Los Angeles by the Los Angeles Business Journal – Los Angeles’ premier business publication. Dan shared this distinction with only 75 other lawyers in the Los Angeles area. In describing the honor, LABJ publisher Josh Schimmels said, “These are lawyers you want in your corner in court.” They are “trailblazing courtroom stewards” who “keep the people and businesses of Los Angeles on track.” The Firm’s announcement regarding this award can be accessed here.

This recognition from the LABJ followed a string of courtroom victories for Dan, the highlight of which was a 2019 trial in which Dan was retained to represent a physician and his companies in a particularly contentious Lanham Act and franchise dispute. At the onset of the litigation, Dan’s client was falsely accused by the other party of statutory rape, as a means to extort a settlement. The stakes were exceedingly high as the false allegations went to the core of the client’s reputation and had the potential to compromise his medical license.

Ultimately, Dan prevailed at trial, earning complete vindication for his client along with a stunning $1.3 million sanction award against the adverse party as a result of the flagrant false rape allegations. In delivering the ruling in this case, District Court Judge David Carter said, “The fraud on the Court perpetuated by [plaintiff] Mattera cannot go unpunished given the many people who have suffered from his actions including [defendant] Dr. Rinehart…”.

Following the successful resolution of this case, Dr. Kristopher Rinehart, M.D., Dan’s client against whom the false allegations were made, said “My father was a lawyer and I have known many. It is unique to find a supremely knowledgeable lawyer and fierce litigator with such versatility that he is able to go from Lanham Act expert to criminal defense to criminal prosecutor to civil justice all in one case. Dan DeCarlo did all that, and he did it in front of the most no-nonsense judge on the federal bench when he did it in front of The Honorable David Carter.” The Court’s order can be read here. The firm’s announcement about this sanction award can be found here, which includes links to extensive coverage of this case by the Los Angeles Daily Journal.

Since 1992, Dan 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 countless 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, Dan’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 and regularly contributes to Lewis Brisbois’ Intellectual Property & Technology blog, The IP Address. Dan has also been recognized repeatedly by the World Trademark Review (WTR) as one of the world’s leading trademark professionals in its annual WTR 1000 ranking.

Similar to all other lawyers in Lewis Brisbois’ Intellectual Property Practice, Dan ascribes to a litigation philosophy that stresses comprehensive early analysis and evaluation in order to plan an aggressive and results-oriented approach. The ultimate goals of the client must be thoroughly reviewed and measured against the complexity and expense of each matter. Some successful examples of this approach from recent years are listed below. Further details of these cases, and additional matters from the past two decades of Dan’s career, can be found under the “Representative Matters” tab.

  • Served as lead defense counsel in Stone Creek v. Omnia Italian Designs, a long-running and hotly contested trademark infringement dispute venued in the District of Arizona, which, after seven years of litigation and two trips to the Ninth Circuit Court of Appeals, ultimately ended with a finding by both the trial and appellate courts that Dan’s client did not owe the plaintiff any damages or the $4.2 million in profits the plaintiff had sought for our client’s adoption of the plaintiff’s STONE CREEK trademark. Stone Creek, Inc., v. Omnia Italian Design, Inc., No. 18-15914, 19-15167
  • Obtained a complete trial victory and sanctions in the form of all attorneys’ fees for his client, a physician and martial arts studio franchisee, in a case that arose from unusual claims regarding trademark infringement and violations of various franchise and license agreements. Following a three-day bench trial, the court found our client to be the prevailing party on all counts, and expressly found that the plaintiff had committed a fraud on the court and engaged in other wrongdoing. The case was covered extensively by the Los Angeles Daily Journal. United Studios of Self Defense, Inc., vs. Kristopher Rinehart et al., USDC No. SA CV 18-1048-DOC (DFMx)
  • Secured a unanimous jury verdict in the Central District of California for client Harbor Breeze Corporation, the largest operator of recreational boating tours in Long Beach, California, in a federal Lanham Act case that included claims of false advertising. Harbor Breeze v. Newport Landing, USDC CD Cal. #8:17-cv-01614- CJC
  • Obtained a completed defense verdict for client Omnia Media in a copyright infringement suit brought by the well-known recording artist Christine D’Clario and her publishing company Gracehouse Music. Dan also secured an award of over $112,000 in attorneys’ fees for his client. Gracehouse Group LLC v. Omnia Media Inc., et al., No. 8-268
  • Served as lead counsel for Southern SARMS in a false advertising and unfair competition case brought by Nutrition Distribution, LLC., in which the case was ultimately dismissed on demurrer without leave to amend. On appeal, , the Court of Appeal upheld the dismissal in a 3-0 decision. Nutrition Distribution, LLC. v Southern SARMs, Los Angeles Superior Court Case No. BC616482- 2016 and California Court of Appeal Case No. B 278132, 2017).
  • Represented zulilly and Hemisphere Global in a copyright infringement case against Unicolors, one of the most prolific copyright fabric plaintiffs in the country. Dan took an early position that the case lacked merit, informed the plaintiff that no monetary payment would ever be tendered, and demanded a dismissal. Despite insisting on a monetary payment for settlement until shortly before trial, Unicolors ultimately voluntarily dismissed the case and released our clients from any potential claims regarding sales of the so-called accused products, all without receiving any monetary payment from our clients. Zulilly and Hemisphere Global, v Unicolors, USDC, No. 16-07122

See the “Representative Matters” tab at the top for more details of these matters, plus additional matters from the past two decades.

Professional Presentations

  • Mr. DeCarlo presented a seminar on September 22, 2016 to the Korean American Manufacturer’s Association on Intellectual Property Issues in the apparel industry. 
  • Mr. DeCarlo conducted a webinar on September 15, 2016 entitled “Defending Intellectual Property & Advertising Injury Claims.”
  • Mr. DeCarlo presented a seminar on November 5, 2015 to the Association of Corporate Counsel entitled “Hot Topics In Patent Law.”

Publications

  • High Court to Rule on Lanham Act Remedies, Daily Journal (March 18, 2020)
  • What Is ‘Fair Use’? The 1985 Chicago Bears Have the Answer, Bloomberg Law (June 21, 2019)
  • Quoted expert in Daily Journal article, “Wind Blowing Apple’s Way in Ongoing Patent Case”, (January 23, 2014)
  • Quoted expert in Daily Journal article, “Apple Seeks $15.7M in fees from Samsung”, (December 9, 2013)
  • After Trial Wins Apple Seeks Attorney Fees From Samsung, Daily Journal (December 9, 2013)
  • Co-Author, Enforcing Online Intellectual Property Rights, For The Defense, Defense Research Institute, (February 2011)
  • No Point to Novelty, IP Review, Issue 25 (Spring 2009)
  • Trademark Usage In Search Engine Advertising, Law360, New York (November 25, 2008)
  • False Advertising and the Internet: Grappling with The Lanham Act and Its Remedies in an Electronic World, The Business Suit, October 2008, DRI Publications
  • An Analysis Of Trade Dress Law, November 2001, For The Defense, The Defense Research Institute
  • The Name Game, An Analysis of Cyber-Squatting; July 2001 For The Defense, The Defense Research Institute
  • ACPA/UDRP: An Improvement Over Traditional Trademark Law? An overview of the law of Cyber-Squatting and Intellectual Property Protection: Entertainment and The Arts Handbook, West Publishing 2000-01 Edition
  • Cybersquatting and Domain Name Disputes, August 2000, American Journalism Review, University of Maryland

Published Opinions

Admissions

  • State Bar Admissions
    • California
  • United States Courts of Appeals
    • United States Court of Appeals for the Ninth Circuit
    • United States Court of Appeals for the Federal Circuit
  • United States Supreme Court

Admissions

California

Awards & Honors

  • In 2020, Dan was named by the Los Angeles Business Journal as one of Los Angeles’ top trial lawyers in its “Leaders of Influence: Top Litigators & Trial Lawyers in Los Angeles”. Dan shared the distinction with 75 other top trial lawyers in Los Angeles. You can read Lewis Brisbois’ announcement about this accolade here.
  • Dan was named by the World Trademark Review (WTR) as one of its leading 1000 trademark practitioners for 2018. The WTR 1000 directory, which focuses exclusively on trademark practices and practitioners, has firmly established itself as the definitive ‘go-to’ resource for those seeking world-class legal trademark expertise. WTR goes through an extensive vetting process including an exhaustive qualitative research project to identify the firms and individuals that are deemed outstanding in this critical area of practice. When identifying the leading firms, factors such as depth of expertise, market presence and the level of work on which they are typically instructed were all taken into account, alongside positive peer and client feedback.
  • Named “California Super Lawyer” by the publishers of Los Angeles Magazine.
  • Named “Leader of Influence” by the publishers of the Los Angeles Business Journal.

Education

Southwestern University School of Law

Juris Doctor, 1992

University of Notre Dame

Bachelor of Arts, 1988

Representative Matters

  • Dan served as lead defense counsel in Stone Creek v. Omnia Italian Designs, a long-running and hotly contested trademark infringement dispute venued in the District of Arizona. In 2020, after seven years of litigation and two trips to the Ninth Circuit Court of Appeals, Dan ultimately secured for our client a finding by both the trial and appellate courts that our client did not owe the plaintiff any damages or the $4.2 million in profits that the plaintiff had sought for our client’s adoption of the plaintiff’s STONE CREEK trademark. During trial, Dan established two key facts that ultimately formed the basis of the Ninth Circuit’s decision that our client did not owe the plaintiff any profits. First, although our client had selected the plaintiff’s mark with knowledge of the plaintiff’s use of the mark, Dan established that our client did so without any intent to trade off of the plaintiff’s good will, arguing that the geographic point of sale for each company was different. He also established that no profits were attributable to the infringement. . Moreover, in a previous phase of the trial, Dan had successfully removed any damage claims. Accordingly, after seven years of litigation, our client was finally able to close the books on the case, owing the plaintiff nothing. The case is Stone Creek v. Omnia Italian Designs, 808 Fed. Appx 459 (9th Cir. 2019). You can read the Ninth Circuit’s opinion here.
  • Dan obtained a complete trial victory and sanctions in the form of all attorneys’ fees for his client, a physician and martial arts studio franchisee. The case arose from unusual claims regarding trademark infringement and violations of various franchise and license agreements between our client and the franchisor of martial arts studios. Following a three-day bench trial before Federal Judge David O. Carter, the court found our client to be the prevailing party on all counts brought by the plaintiff. It further found that the plaintiff had engaged in conduct worthy of sanctions and thus awarded our client its full attorneys’ fees. (The order can be found here.) Specifically, the court’s ruling (which can be found here) expressly found that the plaintiff had committed a fraud on the court, that the plaintiff’s president had lied under oath, and that the plaintiff had engaged in other wrongdoing. The case was covered extensively by the Los Angeles Daily Journal, including in an article published on December 6, 2019, which can be found here.
  • In June 2019, Dan won a unanimous jury verdict for his client in a trial held in the Central District of California. In this Federal Lanham Act case involving claims of false advertising, Dan represented Harbor Breeze Corporation, the largest operator of recreational boating tours in Long Beach, California.   Harbor Breeze accused its competitors, Newport Landing, Davey’s Locker, and their affiliates (all essentially operated as a single entity) of driving customers away from Harbor Breeze’s tours by deceptively advertising extremely low prices for their own tours online. Dan presented evidence at trial to establish that the fees were concocted as part of a scheme to increase revenue while unfairly competing by falsely advertising super-low pricing that the defendants never intended to honor and did not honor. That is, once customers were on the defendants’ websites, they could not check out until they had paid a series of hidden fees, which were given legitimate-sounding names, such as “wharfage” and “fuel” fees. The jury found unanimously for Harbor Breeze, determining that the defendants’ scheme was deceptive to a “substantial segment” of customers. Following the jury verdict, Dan sought and obtained injunctive relief against the defendants to halt the false advertising. A copy of the injunction is linked here.
  • In 2019, Dan succeeded in establishing a complete defense to claims filed against his client, Omnia Media, in a copyright infringement suit brought by the well-known recording artist, Christine D’Clario, and her publishing company, Gracehouse Music. In addition, Dan secured an award of attorneys’ fees for Omnia of over $112.000. Early in the case, Dan had identified dispositive issues and ultimately forced the plaintiffs to stipulate to a dismissal, rather than face a summary judgment motion. The Court then found that Omnia’s position met the appropriate standard for an award of attorneys’ fees. The case is Gracehouse Group LLC v. Omnia Media Inc., et al. No. 8-268, (C.D. Cal.).
  • Dan served as lead counsel for Southern SARMs in a false advertising and unfair competition case brought by Nutrition Distribution, LLC. Dan succeeded in having the case dismissed on demurrer without leave to amend and, following the plaintiff’s appeal, thee California Court of Appeal unanimously confirmed the trial court’s dismissal. In the underlying matter, the plaintiff had accused our client of selling and marketing illegal “synthetic drugs with similar effects to illegal anabolic steroids” to body builders and sought  injunctive relief as well as our client’s profits from the sale of these substances. Dan achieved the dismissal of the plaintiff’s case on multiple grounds, including that (1) the plaintiff’s claims invaded the primary jurisdiction of the U.S. Food and Drug Administration (FDA), (2) the claims sought remedies, namely damages and profits, that were not viable under the causes of action plead pursuant to California’s unfair competition statutes, and (3) the plaintiff’s injunctive request was not viable under the law. The matter includes Los Angeles Superior Court Case No. BC616482- 2016 and California Court of Appeal Case No. B 278132, 2017).
  • In 2017, Dan represented Zulilly and Hemisphere Global in a copyright infringement case against Unicolors, one of the most prolific copyright fabric plaintiffs in the country. Early in the case, we demanded a dismissal, taking the position hat the case lacked merit and that no monetary payment would ever be tendered. 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. The case is No. 16-07122, United States District Court, Central District of California.
  • Dan served as co-lead counsel in National Shooting Sports Foundation v. State of California in seeking to invalidate legislation on behalf of his client on the grounds that it was impossible to comply with the legislation. Dan successfully established that in California, statutes that are impossible to comply with are the proper subject of a request for cancellation of that statute via a declaratory relief claim. As such,the Appellate Court reversed the trial court’s conclusion that the separation of powers doctrine precluded a party from challenging a statute for reasons unrelated to the constitutionality of that statute, holding instead that impossibility of performance was, in fact, a distinct means to challenge the validity of a statute. This 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).
  • Dan served as co-lead counsel for 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. Dan’s defense strategy centered on attacking the plaintiff’s claim to being the copyright owner of multiple trophy designs. We argued that the trophies were not proprietary to the plaintiff. Through discovery and investigation, we developed strong defenses that the plaintiff had systematically obtained copyright registrations for works in which they were not the owners by making material misrepresentations to the Copyright Office and then lying 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 the plaintiff’s fraud, perjury and lack of viable claims. As summary judgment motions were being prepared, the plaintiff abruptly dismissed its case, and its then-litigation counsel disassociated itself from the 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 it recommended a criminal investigation of the matter stating, “The United States Attorney should consider whether criminal charges are appropriate.”
  • Dan represented Kelly Van Halen, the ex-wife of Alex Van Halen, one of the founding members of the band VAN HALEN (the Band). The Band claimed that Ms. Van Halen’s use of her last name infringed their 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, Dan negotiated a favorable settlement in which Ms. Van Halen was allowed to continue using her last name, VAN HALEN, as part of her own trademarks, and the Band has agreed not to oppose any efforts by Ms. Van Halen to register such trademarks anywhere in the world. Furthermore, Ms. Van Halen paid no money to the Band as part of the settlement.
  • In 2012, Dan obtained a reversal of a trial court’s denial of our client’s ANTI-SLAPP motion, resulting in the dismissal of claims that our client had published false and defamatory material. Direct Shopping Network v. Robert James, 2012 Cal. App. LEXIS 722.
  • In 2011, Dan served as lead counsel for the television network HD Net, successfully obtaining summary judgment in a suit brought by an actress/model claiming misappropriation of name and likeness. The court also awarded our client attorneys’ fees.
  • In 2011, Dan represented Pita Pit, a nationwide restaurant franchisor, in case brought by franchisees for fraud, breach of fiduciary duty, and breach of contract. Dan obtained an arbitration ruling that enabled our client to eventually settle the matter under confidential terms.
  • In 2011, Dan obtained a significant ruling in the Ninth Circuit Court of Appeals for our client Trafficschool.com against the owners of the website DMV.ORG, one of the top 300 websites in the world. Previously, at a trial in 2008, Trafficschool.com was awarded what is believed to be an unprecedented injunction that required the owners of DMV.ORG to display a “splash screen” on their site warning every visitor that the site is not affiliated with a governmental agency. In its opinion, the Ninth 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, Dan obtained a dismissal for a client on an issue of first impression concerning application of the Copyright Act’s DMCA. The plaintiff had sued our client in California state court alleging that our client’s representation in an EBAY VERO take down notice that alleged trademark infringement subjected our client to liability for various California based tort claims. We established that the DMCA was the sole statutory framework that 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, Dan 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, Dan 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. Premier Displays v. EWI Worldwide, 2009 U.S. Dist. LEXIS 11946 (C.D. Cal 2009).
  • In 2009, Dan 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 2007, Dan 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. 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 finally disposing of all potential liability through aggressive depositions of our adversary’s expert witnesses and successful motions in limine, our client was awarded over $600,000 in attorneys’ fees and costs for the expense of defending itself.
  • In 2007, in defense of a client in a trade secrets misappropriation lawsuit involving the flooring industry, Dan was successful in obtaining a settlement that included our client being reimbursed for its attorneys’ fees. The Trade Secret Act provides for attorneys’ fees to prevailing defendants accused in bad faith. By aggressively defending our client, we were able to illustrate the case had no merit, thereby requiring our client’s adversary to compensate our client for the fees incurred in defending itself.
  • In 2007, Dan was successful in obtaining an affirmance on appeal before the Federal Circuit Court of Appeals of a summary judgment ruling in favor of his client, Arminak & Associates, Inc., in a patent infringement case (Arminak & Associates, Inc. v. St. Gobain Calmar, Inc. 501 F. 3d. 1314 (Fed. Cir. 2007)). We established for our client in a 3-0 decision before the Federal Circuit a design patent infringement test standard that strengthened the right of our client to compete with large conglomerates holding design patents on component parts. This ruling later withstood a request for an en banc hearing despite a strong lobbying effort from industrial designers.
  • In 2007, on behalf of Patriarch, Inc., Dan obtained a nearly $600,000 jury verdict for breach of contract and copyright infringement.
  • Before the Ninth Circuit Court of Appeals, Dan obtained a 3-0 affirmance of a summary judgment ruling on behalf of his client, Fishery Products International. Fishery had been accused of trade mark infringement over the use of Contessa Food Products’ “signature” trademark. The lower court granted summary judgment even though the issue of infringement was never adjudicated. Dan designed a strategy to establish that there was no remedy for any alleged wrongful conduct and therefore no reason to adjudicate the infringement claim. The district court and Ninth Circuit agreed, disposing of the case with no liability to Fishery even though there was never an adjudication of the issue of infringement.
  • In 2003 and 2004 Dan obtained a nearly $500,000 jury verdict against the University of Southern California concerning patented dental implants, and successfully defended Nishimoto Trading Company (one of the largest Japanese food distributors in the United States) in a several week jury trial in Los Angeles.
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