Carla B. Oakley

Partner

Carla B. Oakley is a partner in Morgan Lewis's Intellectual Property Practice. Ms. Oakley focuses on intellectual property litigation and counseling and regularly handles a wide variety of commercial disputes. Ms. Oakley's intellectual property litigation experience includes prosecution and defense of trade secret, trademark, and copyright infringement litigation (including infringement via the Internet); false advertising; unfair competition; and right of publicity litigation, as well as patent litigation. In her 20 years of practice, Ms. Oakley has represented companies in all phases of dispute resolution and litigation in courts across the country, including jury and bench trials, mediation, arbitration, appeals in state and federal courts, Trademark Trial and Appeal Board cancellation and opposition proceedings, and ICANN domain name proceedings.

In addition to her litigation practice, a substantial portion of Ms. Oakley's practice is devoted to intellectual property counseling, including counseling related to the strategic development, protection, registration, and acquisition or disposition of trademarks and copyrights; counseling related to trade secret protection; and counseling on Internet liability, privacy and data security breach issues, advertising (including SPAM regulation), sweepstakes and promotions, and database protection issues. Her experience also includes implementing strategies for protection against counterfeit and grey goods and obtaining and defending against U.S. Customs detentions and seizures.

Ms. Oakley frequently lectures and writes on intellectual property topics, and contributes regularly to the Morgan Lewis on IP newsletter. Lectures and publications include: "Trademark Law Updates," San Francisco IP Law Association Annual Conference (May 2008); "Tackling the Branding Challenge," Morgan Lewis First Cup of Coffee IP Law Series (April 2008); "Blogs in Business -- Limiting Liability in Unchartered Territory," American Conference Institute (April 2008); "Trademark Prosecution and Clearance Updates and Practice Tips," ABA IP Law Section Annual Spring Conference (April 2008);  "Protecting IP and Avoiding Liability with User Generated Content and New Media Advertising," American Conference Institute (February 2008); "IP Due Diligence: Protecting Trade Secrets and Privileged Information," American Conference Institute (January 2008); "Avoiding Liability in the eWorld of User Generated Content and Brand Sponsored Entertainment," American Conference Institute (December 2007); "Protecting Trade Secrets in the Workplace," American Conference Institute (June 2007); "Zealous Advocacy or Vexatious Litigation," INTA Leadership Meeting (November 2005); " Privacy and Spam Regulation: Collection and Use of Personal Information In Online Advertising" (January 2005); "Are the Courts Set to Lock the Door on Keyword Advertising?" World Trademark Law Report (May 2004) and World eBusiness Law Report (September 2004); Intellectual Property Workshop for Company Executives, Women Presidents' Organization Annual Meeting (February 2004); "TTAB Trials," Practicing Law Institute (January 2003); "Avoiding Common Pitfalls in TTAB Practice," Practicing Law Institute (February 2001 and February 2002); "Internet Liability Issues," Corporate Counsel Institute (October and December 2001); "Copyright Law Basics," Law.com OnLine Seminar (March 2001); "The Copyright Office Comes to Stanford," advisory panel member and moderator (March 1999); "Copycats May Be Safe–To a Point," San Francisco Daily Journal IP Supplement (September 1998); and various legal briefings for clients, articles for the INTA Bulletin, and a monthly column for the Industry Standard.

Over the years, Ms. Oakley has been a member of various International Trademark Association (INTA) committees, including the Anti-Counterfeiting and Enforcement Committee, the INTA Bulletin Committee, the Issues and Policy Committee, and the Parallel Imports Committee, and she was appointed to the Academic Subcommittee of the Membership Committee for 2005-2006. Ms. Oakley is also a member of various other intellectual property organizations, including the Copyright Society of the U.S.A., the IP Section of the American Bar Association, and the Promotion Marketing Association.

Ms. Oakley is an Honorary Member of the board of directors for Larkin Street Youth Services, having served nine years on its board.

Ms. Oakley is admitted to practice in California.