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 also advises clients on how to protect IP assets, how to minimize risks of conducting business online (including "user generated content" issues), and how to comply with advertising, sweepstakes, and privacy laws. Her experience includes litigation involving trademarks, domain names, copyrights, advertising, unfair competition rights of publicity, trade secrets, and design patents. Ms. Oakley has first-chair jury trial, appellate, and alternative dispute resolution experience in numerous state and federal courts and other jurisdictions, including the U.S. Trademark Trial and Appeal Board and ICANN.

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, and registration of trademarks and copyrights; counseling related to trade secret protection; and counseling on Internet liability, privacy and data security breach issues, advertising, sweepstakes and promotions, and database protection issues. In her 22 years of practice, she has represented clients in a wide range of industries, from global businesses to startups.

Ms. Oakley frequently lectures and writes on intellectual property topics. Lectures and publications since 2000 include "Liability for On-Line User Generated Content: Defamation and Free Speech Collide," San Francisco Bar Association (October 2009); "Fraudulent Use and Unsupported Intent-to-Use Claims: US Trademark Registrations and Applications are Under Attack," Morgan Lewis Webinar (October 2009); "Death of Medinol: Federal Circuit Rejects the Trademark Board's Fraud Standard," Morgan Lewis IP NewsFlash (September 2009); "California Supreme Court Rules on Right of Publicity Claims," Morgan Lewis IP NewsFlash (August 2009); "PTO and FDA Trademark Clearance and Protection Issues for Life Sciences Companies," Morgan Lewis IP Academy, Tokyo, Japan (November 2008); "Protecting Your Company's Trade Secrets," PLI (October 2008); "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); and "Copyright Law Basics," Law.com OnLine Seminar (March 2001).

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 currently chairs the Professor Task Force for the Academic Subcommittee of the Membership Committee. She was appointed co-vice chair of the INTA's Academic Committee for the 2010–2011 term. Ms. Oakley is also a member of various other intellectual property organizations, including the Copyright Society of the U.S.A. and the IP Section of the American Bar 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.