Daniel DeCarlo

Partner

Dan.DeCarlo@lewisbrisbois.com

Dan DeCarlo is a partner in the Los Angeles office of Lewis Brisbois and chair of the Intellectual Property & Technology Practice and co-chair of the Trade Secrets & Non-Compete Disputes 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 and 2021 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 less than 88 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 the 2021 distinction 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.

Primary Area(s) of Practice

  • Intellectual Property & Technology
  • National Trial Practice

Additional Experience

Admissions

California

Awards & Honors

  • Dan was instrumental in assisting the State of California in its investigation of a franchise that had sued the firm’s client. Dan's assistance lead to the state issuing an order levying over $2 million in penalties and restitution against the franchise. You can read Lewis Brisbois' announcement about this victory here.
  • In 2021, Dan was named by the Los Angeles Business Journal as one of the best litigators in Los Angeles for the second year in a row in its “Leaders of Influence: Top Litigators & Trial Attorneys”. Dan joined 88 of the Los Angeles region's "very best litigators." You can read Lewis Brisbois’ announcement about this accolade here.
  • 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

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