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Morgan Lewis
Oakley

Carla B. Oakley

Partner

carla.oakley@morganlewis.com

San Francisco Phone +1.415.442.1301 Fax +1.415.442.1001

One Market, Spear Street Tower, 28th Floor//San Francisco, CA 94105-1596//United States

Silicon Valley Phone +1.650.843.7299 Fax +1.650.843.4001

1400 Page Mill Road//Palo Alto, CA 94304-1124//United States

Carla B. Oakley focuses on intellectual property (IP) and advertising, from inception and global protection through trial. Her experience includes litigation and counseling involving trademarks, trade secrets, copyrights, advertising, rights of publicity, privacy, social media, licenses, product design strategies, patents, and database protection. One of the partners heading up the IP and advertising practice in Northern California, Carla has first–chair jury trial, appellate, and arbitration experience. She helps clients maximize their IP, manage risks, and protect their rights.

Throughout her 30 years of practice, clients from startups to global businesses have sought Carla’s counsel. Carla has experience in various state and US federal courts and other venues, such as the US Trademark Trial and Appeal Board, the International Chamber of Commerce (ICC) Court of Arbitration, and Uniform Dispute Resolution Policy (UDRP) proceedings pursuant to ICANN regulations. Her litigation experience includes cases involving trademarks, domain names, trade secrets, copyrights, counterfeit goods, advertising, product design and trade dress claims, unfair competition, rights of publicity, patents, and false patent marking claims, as well as IP license disputes, database protection issues and enforcement of online terms of service.

In addition to litigation, Carla counsels clients regarding the strategic development and registration of trademarks and global trademark portfolio management; civil and criminal anti-counterfeiting enforcement; product design protection strategies; trade secret protection programs; copyright registration and fair use issues; IP due diligence and IP enforcement programs; licenses and other types of agreements involving IP; and Internet liability, privacy and data security breach issues, and database protection issues. She also advises clients on how to minimize risks of conducting business online and how to comply with advertising regulations, Federal Trade Commission and Attorney General guidelines, laws pertaining to sweepstakes and skills contests, and privacy laws.

Carla frequently lectures and writes on IP and advertising topics and is active in several professional organizations. She is on the Board of Directors for the San Francisco Intellectual Property Association, and is a member of the Emerging Issues Committee for the International Trademark Association (INTA). Carla previously chaired the US subcommittee of INTA’s Nontraditional Marks Committee, was a member of the INTA PAC board for more than a decade, and has served on several other INTA committees. A long-time member of the Bar Association of San Francisco (BASF), Carla has been a member of BASF’s Judiciary Committee, chaired the BASF Litigation Section and served on the Litigation Section’s Executive Committee. She is an honorary board member for Larkin Street Youth Services.

Selected Representations

  • ACR Electronics v. DME Corporation, obtained a preliminary injunction preventing the defendant’s product from ever being sold, asserting copyright and trade secret claims; resulted in stipulated judgment and permanent injunction preventing the product from ever being sold and preventing defendants from competing with the plaintiff for 2-5 years for a range of products. 
  • Financial Industry Regulatory Authority v. Training Consultants, obtained a preliminary injunction and stipulated judgment with a permanent injunction preventing defendants from using plaintiff’s confidential secure tests, asserting copyright and trade secret claims.
  • Azimuth v. SeaTel, representing the defendant, successfully resolved claims of false advertising, false patent marking and trade dress infringement claims.
  • Stone v. Affliction, representing the plaintiff, successfully resolved claims of copyright infringement, resulting in the defendant’s cessation of use of the plaintiff’s copyrighted artwork on clothing.
  • KLA-Tencor v. Murphy, obtained a temporary restraining order and ex parte seizure order, and then a stipulated judgment and permanent injunction based on trade secret claims and violations of the Computer Fraud and Abuse Act.
  • Solin v. National Association of Securities Dealers, successfully obtained dismissal of declaratory judgment claims challenging the protectibility of NASD’s database of arbitration awards.  (NASD changed its name and is now named the Financial Industry Regulatory Authority, or FINRA.)
  • Financial Industry Regulatory Authority v. ProctorU, TTAB opposition, representing opposer, applicant withdrew its application, causing judgment to be entered in opposer’s favor, and applicant agreed to limit its use of PROCTORU.
  • Horiyoshi Worldwide v. Rowe, TTAB cancellation, representing petitioner, secured registrant’s agreement not to oppose the petition to cancel in the United States and also in a similar action in Canada. 
  • Financial Industry Regulatory Authority v. Sussman & Frankel, LLP, UDRP proceeding, successfully obtained an order compelling the transfer of multiple domain names that included FINRA’s registered FINRA and NASD marks.
  • Weatherford v. WGroup, UDRP proceeding, successfully obtained an order compelling transfer of domain name to complainant.

Awards and Affiliations

Member, Practice Group of the Year, Intellectual Property, Law360 (2019)

Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)

Leading Trademark Practitioner, Enforcement & Litigation, California, WTR 1000, World Trademark Review (2020–2022)

Leading Trademark Practitioner, Prosecution and Strategy, California, WTR 1000, World Trademark Review (2019–2022)

Recommended, Intellectual property: Trademarks: non-contentious (including prosecution, portfolio management and licensing), The Legal 500 US (2022)

Recommended, Intellectual property: Copyright, The Legal 500 US (2019, 2020, 2022)

Recognized, Top 250 Women in IP, Managing Intellectual Property (2021, 2022)

Recognized, IP Trademark Star – California, Managing Intellectual Property (2018–2022)

Recognized, IP Copyright Star – California, Managing Intellectual Property (2020–2022)

Recognized, Trademarks, Who’s Who Legal (2016, 2017, 2022)

Recognized, Who's Who Legal: California (2009)

Recognized, Northern California Super Lawyer (2006)

Recognized, Top Lawyers in the Bay Area - Intellectual Property, Bay Area Lawyer Magazine (2006)

Executive Committee Honorary Member, Bar Association of San Francisco Litigation Section

INTA PAC Board Member, International Trademark Association (2008–2019)

Nominating Committee Member, Bay Area CFO Awards (2010–2011)

Member, International Association of Privacy Professionals

Member, Board of Directors for the San Francisco IP Law Association (2016-present)

Admissions

  • California

Education

  • University of California, Hastings College of the Law, 1987, J.D.
  • University of Wisconsin, 1981, B.A.

Sectors

  • Life Sciences
  • Technology
  • Healthcare

Services

  • Trademark, Copyright, Advertising Litigation & Brand Management
  • Intellectual Property
  • Privacy & Cybersecurity
  • Trade Secrets, Proprietary Information & Noncompetition/​Nondisclosure Agreements
  • Brand & Product Innovation
  • ADA Public Accommodation And Accessibility Litigation & Counseling
  • Healthcare & Life Sciences Litigation
  • Healthcare Transactions

Regions

  • North America

Trending Topics

  • US Consumer Privacy Acts

Events

3/1/2022 - SFIPLA: When Your Brand Needs A Change – Lessons In Rebranding
12/9/2019 - Practical Privacy and the CCPA: Bracing for January 1
10/22/2019 - CCPA Update: New Amendments and Preparing for January 1
11/14/2018 - Morgan Lewis–TMI Joint Seminar: Doing Business Online, Through Mobile Apps, and with Connected Devices – Limiting Liability, New Privacy Laws, and Litigation Updates
11/1/2018 - The Bar Association of San Francisco’s IP BYTES: Hot Topics in Trademark Law
10/16/2018 - The California Consumer Privacy Act Amendments, Round 1
1/18/2018 - Elimination of Bias; False Advertising/False Marketing and The Implications of 3D Printing Technologies
7/19/2016 - SFIPLA’s The New Defend Trade Secrets Act Key Features and Best Practices
6/23/2016 - Women Leaders Share Their Perspectives on Working in Technology & the Law
6/1/2016 - The New Federal Trade Secrets Act & You
6/8/2012 - 2012 Asian America MultiTechnology Association’s Social Media Conference
6/6/2012 - Limiting and Avoiding Liability Online
12/7/2010 - 22nd Annual Silicon Valley Association of General Counsel All Hands Meeting

News

8/3/2022 - Managing IP Recognizes Morgan Lewis Practices, Lawyers in 2022 IP Stars
6/13/2022 - Morgan Lewis Partner Carla Oakley Named in Managing IP‘s Top 250 Women in IP Feature
3/3/2022 - Morgan Lewis Earns Global Rankings in World Trademark Review 1000 Guide
7/29/2021 - Morgan Lewis Partner Carla Oakley Named Among Managing IP’s 2021 Top 250 Women in IP
7/29/2021 - Morgan Lewis Practices, Partners Recognized by Managing IP in 2021 IP Stars
2/17/2021 - World Trademark Review Recognizes Morgan Lewis Among 2021 Leading Trademark Firms
6/26/2020 - Managing IP Names Morgan Lewis Practices, Lawyers Among 2020 IP Stars
5/4/2020 - Justices Talk Monopolies, Generic Marks in Booking.com Case, Bloomberg Law
2/14/2020 - World Trademark Review Recognizes Morgan Lewis Among Leading Trademark Firms in 2020
9/26/2019 - Morgan Lewis Named ‘Powerhouse’ Firm in Ninth Annual BTI Litigation Outlook
5/23/2019 - Managing Intellectual Property Names Morgan Lewis Practices, Lawyers Among 2019 IP Stars
2/7/2019 - World Trademark Review Recognizes Morgan Lewis Among Leading Trademark Firms in 2019
5/24/2018 - Morgan Lewis Lawyers and Practices Ranked as Intellectual Property ‘Stars’
March 2018 - Morgan Lewis Among Juristat Top 100 Patent Firms in 2018
April 2017 - Morgan Lewis Recognized as a Top Patent Firm by Juristat
5/26/2016 - Is Your Information Protected Under the New Defend Trade Secrets Act?
March 2016 - Morgan Lewis Ranked as one of Juristat's Top 100 Patent Firms
1/12/2016 - Morgan Lewis Advises Healthline Networks, Inc. in Equity Investment by Summit Partners
11/19/2015 - Morgan Lewis Represents PCM in Acquisition of Assets from the North American Technology Group of Systemax, Inc.
8/5/2015 - Morgan Lewis Advises Virtium in Growth Investment by L Squared Capital Partners
12/29/2014 - Morgan Lewis Advises BNI in Growth Investment
5/14/2014 - Morgan Lewis Advises C-Preme on Sale to BRG Sports
2/27/2013 - 5 Tips For Employers To Protect Their Trade Secrets, Law360
9/5/2012 - Securities Test Prep Co. Copied Exam Questions, FINRA Says, Law360

Publications

12/18/2020 - California Attorney General Proposes Fourth Set of CCPA Regulation Changes
8/31/2020 - CCPA Final Regulations Approved and Immediately Enforceable by California Attorney General
7/1/2020 - US Supreme Court Allows Trademark Registration for Booking.com
6/4/2020 - CCPA: What Companies Need to Do Ahead of July 1 Enforcement
4/3/2020 - Protecting Trade Secrets During Shelter-in-Place
2/18/2020 - California Attorney General Releases Modifications to Proposed CCPA Regulations
1/7/2020 - Preparing for CCPA Enforcement by the California Attorney General
1/6/2020 - Preparing for the CCPA Private Right of Action for Certain Security Incidents
12/5/2019 - The CCPA Impacts Non-US Companies. Are You Prepared?
12/2/2019 - Employee and Other Notices by January 1, 2020, and Related Issues for Employers
11/22/2019 - Responding to Requests to Opt Out
11/20/2019 - Responding to Requests to Delete
11/15/2019 - Responding to Requests to Know
11/13/2019 - Privacy Policy Requirements
11/8/2019 - Verifying Consumer Requests
11/6/2019 - Receiving Requests
December 2014 - The Internet of Things and New Technologies: Data Ownership, Privacy, Risks for IP Owners and Strategies for Product Design Protection, presented for a Morgan Lewis/TMI Joint Seminar, Tokyo, Japan
May 2014 - Avoiding and Addressing Online Liability Issues: Privacy, Social Media, Digital Content Distribution, New Business Models and More, presented for a Morgan Lewis/TMI Joint Seminar, Osaka, Japan
10/11/2013 - New California Law Protects Online Account Information
10/4/2013 - California Enacts New Laws on Data Privacy and Security Issues
October 2013 - Avoiding and Addressing Online Liability Issues: Privacy, Social Media, Digital Content Distribution, New Business Models and More, presented for a Morgan Lewis/TMI Joint Seminar, Osaka, Japan
1/9/2013 - New Federal Statute Strengthens Trade Secret Protection
1/3/2013 - Increasing Scrutiny of Consumer Data Collection
November 2011 and November 2012 - Trademark Selection, Clearance, and Enforcement, presented at the University of California — Berkeley
10/19/2012 - Trade Dress, Copyright or Design Patent?, The Recorder
September 2012 - Legal Issues for Public Relations Professionals, presented for the PR Society of Northern California
September 2012 - Product Design Protection Strategies in the U.S.: Trade Dress, Design Patents and Copyrights, presented for a Morgan Lewis/TMI Joint Seminar, Tokyo, Japan
6/8/2012 - Entrepreneurship in Social Media, presented at the Asian American Multitechnology Association Conference, San Francisco
October 2011 - Litigating in a CyberWorld—The Computer Fraud and Abuse Act and Other Cyber Laws, presented for the San Francisco Bar Association
September 2011 - Trademark and Copyright Law Developments, presented for a Morgan Lewis/TMI Joint Seminar, Tokyo, Japan
August 2011 - Product Design Protection Strategies: Trade Dress, Design Patents, and Copyrights, presented for a Morgan Lewis In-House Seminar
August 2011 - User Generated Content: Avoiding Liability and Reducing Risk, presented for a Morgan Lewis Client Seminar
May 2011 - Protecting Trade Secrets and Dealing with Restrictive Covenants, presented for a Morgan Lewis webinar
April 2011 - Keyword Advertising, presented for a Morgan Lewis Client Seminar
December 2010 - Tweets, Blogs, IMs and E-Mail: Privacy Considerations in the Age of New Media, presented for the Silicon Valley Association of General Counsel's All Hands Meeting
September 2010 - Combating Trade Secret Theft and Computer Crimes, presented for the San Francisco Bar Association
September 2010 - Trade Secrets and Confidential Computer Data: Protection Strategies and Litigation in the U.S., presented for a Morgan Lewis/TMI Associates Joint Seminar, Tokyo, Japan
July 2010 - Post Quon Supreme Court Decision: The Future Landscape of Web 2.0 Issues in the Workplace, presented for a Morgan Lewis webinar
April 2010 - Evolving Employee Rights in Web 2.0: Compliance with FTC Endorsement Guidelines, presented for a Morgan Lewis webinar