Spear Street Tower
San Francisco, California 94105
Carla B. Oakley is a partner in Morgan Lewis's Intellectual Property Practice and is one of the partners heading up the Trademark/Copyright/Advertising Practice in Northern California. Ms. Oakley focuses on protection of trademarks and copyrights, as well as IP, unfair competition, and advertising litigation. She also advises clients on how to minimize risks of conducting business online 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.
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 more than 25 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. Her lectures and publications include:
'New Federal Statute Strengthens Trade Secret Protection,' Morgan Lewis LawFlash (Jan. 2013)
'FTC Increasing Scrutiny of Consumer Data Collection,' Morgan Lewis LawFlash (Jan. 2013)
'Trade Dress, Copyright or Design Patent?,' The Recorder (Oct. 2012)
'Product Design Protection Strategies in the U.S.: Trade Dress, Design Patents and Copyrights,' Morgan Lewis/TMI Joint Seminar, Tokyo, Japan (Sept. 2012)
'Legal Issues for Public Relations Professionals,' PR Society of Northern California (Sept. 2012)
'Limiting and Avoiding Liability Online,' Morgan Lewis Client Seminar (June 2012)
'Entrepreneurship in Social Media,' Asian American Multitechnology Association Conference (June 2012)
'Trademark Selection, Clearance and Enforcement,' University of California-Berkeley (Nov. 2011 and Nov. 2012)
'Litigating in a CyberWorld—The Computer Fraud and Abuse Act and Other Cyber Laws,' San Francisco Bar Association (Oct. 2011)
'Trademark and Copyright Law Developments,' Morgan Lewis/TMI Joint Seminar, Tokyo, Japan (Sept. 2011)
'Product Design Protection Strategies: Trade Dress, Design Patents, and Copyrights,' Morgan Lewis In-House Seminar (Aug. 2011)
'User Generated Content: Avoiding Liability and Reducing Risk,' Morgan Lewis Client Seminar (Aug. 2011)
'Keyword Advertising,' Morgan Lewis Client Seminar (Apr. 2011)
'Protecting Trade Secrets and Dealing with Restrictive Covenants,' Morgan Lewis Webinar (May 2011)
'Tweets, Blogs, IMs and E-Mail: Privacy Considerations in the Age of New Media,' Silicon Valley Association of General Counsel's All Hands Meeting (Dec. 2010)
'Trade Secrets and Confidential Computer Data: Protection Strategies and Litigation in the U.S.,' Morgan Lewis/TMI Associates Joint Seminar, Tokyo, Japan (Sept. 2010)
'Combating Trade Secret Theft and Computer Crimes,' San Francisco Bar Association (Sept. 2010)
'Post Quon Supreme Court Decision: The Future Landscape of Web 2.0 Issues in the Workplace,' Morgan Lewis Webinar (July 2010)
'Evolving Employee Rights in Web 2.0: Compliance with FTC Endorsement Guidelines,' Morgan Lewis Webinar (Apr. 2010)
'Protection of Proprietary Technology for U.S. Subsidiaries,' Morgan Lewis Webinar (Apr. 2010)
'Liability for On-Line User Generated Content: Defamation and Free Speech Collide,' San Francisco Bar Association (Oct. 2009)
'Fraudulent Use and Unsupported Intent-to-Use Claims: U.S. Trademark Registrations and Applications Are Under Attack,' Morgan Lewis Webinar (Oct. 2009)
'Death of Medinol: Federal Circuit Rejects the Trademark Board's Fraud Standard,' Morgan Lewis IP LawFlash (Sept. 2009)
'California Supreme Court Rules on Right of Publicity Claims,' Morgan Lewis IP LawFlash (Aug. 2009)
'PTO and FDA Trademark Clearance and Protection Issues for Life Sciences Companies,' Morgan Lewis IP Academy, Tokyo, Japan (Nov. 2008)
'Protecting Your Company's Trade Secrets,' PLI (Oct. 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 (Apr. 2008)
'Blogs in Business—Limiting Liability in Unchartered Territory,' American Conference Institute (Apr. 2008)
'Trademark Prosecution and Clearance Updates and Practice Tips,' ABA IP Law Section Annual Spring Conference (Apr. 2008)
'Protecting IP and Avoiding Liability with User Generated Content and New Media Advertising,' American Conference Institute (Feb. 2008)
'IP Due Diligence: Protecting Trade Secrets and Privileged Information,' American Conference Institute (Jan. 2008)
'Avoiding Liability in the eWorld of User Generated Content and Brand Sponsored Entertainment,' American Conference Institute (Dec. 2007)
'Protecting Trade Secrets in the Workplace,' American Conference Institute (June 2007)
'Zealous Advocacy or Vexatious Litigation,' INTA Leadership Meeting (Nov. 2005)
'Privacy and Spam Regulation: Collection and Use of Personal Information in Online Advertising' (Jan. 2005)
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. Most recently, she was a co-vice chair of INTA's Academic Committee and is currently a member of the Non-Traditional Marks Committee. In addition to her INTA committee work, Ms. Oakley is on the board of the INTA-PAC. 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 currently on the Judiciary Committee for the Bar Associaton of San Francisco (BASF), and previously served as Chair of BASF's Litigation Section and as a member of BASF's Plebiscite Special Committee.
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.
|Areas of Practice||1) Intellectual Property, 2) Trademarks, 3) Advertising & IP, 4) Trade Secrets, 5) Copyright, 6) Privacy & Cybersecurity, 7) Advertising, 8) Consumer Protection, 9) & Privacy, 10) Healthcare and 11) Social Media Law|
|Law School||University of California, Hastings College of the Law|
|Education||University of Wisconsin, 1981, B.A.|
|Bar Member / Association||State Bar of California|
|Most recent firm||Morgan, Lewis & Bockius LLP|
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