Caroline Y. Barbee focuses her practice on all areas of intellectual property litigation and enforcement, including copyright and trademark infringement litigation, as well as registering, policing and enforcing trademarks and copyrights.
In addition to litigating copyright and trademark infringement cases, Ms. Barbee has experience litigating general commercial disputes involving breach of contract, interference with contractual relations and prospective business advantage, defamation, false advertising and other forms of unfair competition.
Prior to joining Kilpatrick Townsend, Ms. Barbee worked as an associate at Keats McFarland & Wilson LLP in Beverly Hills, California, a boutique intellectual property law firm with extensive involvement in the development, protection, and enforcement of famous brands as they relate to consumer products, entertainment and the Internet.
Previously, Ms. Barbee was an attorney in the Los Angeles office of a national law firm. While in law school, Ms. Barbee served as a judicial extern to the Honorable S. James Otero at the United States District Court for the Central District of California.
- Represented Givenchy and argued that Givenchy’s handbag design functioned as a protectable trade dress. The defendant produced a line of “fast fashion” handbags that mimicked elements of Givenchy’s trade dress. We defeated the defendant’s summary judgment motion which argued that Givenchy’s handbag design did not function as a protectable trade dress. The case subsequently settled on favorable terms.
- Represent Stanley Black & Decker, Inc. and The Black & Decker Corporation in a trademark and trade dress counterfeiting case arising out of the import and sale of counterfeit DEWALT batteries. Prior to filing suit, we supervised an extensive investigation into the importation and sale of batteries which copied Stanley Black & Decker’s registered DEWALT trademark and black and yellow trade dress for batteries. We obtained a temporary restraining order and preliminary injunction against the offending company and its principals.
- Represented Fossil Inc. and Macy’s Merchandising Group, Inc. against allegations that the plaintiff owned trademark rights in its founder’s surname – YOUNGBLOOD – for use on watches, and that Fossil and Macy’s infringed its rights by using the term Youngblood to identify a line of DIESEL-branded watches. After conducting extensive fact discovery on a severely compacted schedule, including taking and defending over 15 depositions in two months, and conducting expert discovery on secondary meaning of surnames in the context of the fashion industry, we obtained summary judgment on behalf of Macy’s and settled the case on behalf of Fossil.
- Defended Jay Z and Roc Nation against a claim of trademark infringement. Volcom Inc. alleged that the red diamond design used by Roc Nation in connection with music-based entertainment services infringed Volcom’s black and white diamond logo. The case was challenging because the plaintiff was still controlled by its owner and founder and was adamant and unduly expansive concerning his company’s rights. Just prior to trial we were finally able to convince the plaintiff to settle the case.
- Represented Prepayd Wireless in connection with a dispute arising out of its commercial lease. Prepayd, the tenant with respect to the lease at issue, was sued by its landlord for breach of lease and rent due and owing after Prepayd surrendered possession of the premises based on the plaintiff-landlord’s interference with Prepayd’s right to quiet enjoyment. The landlord filed a demurrer seeking to dismiss Prepayd’s entire cross-complaint for constructive eviction and related claims. At the hearing, the judge overruled the landlord’s demurrer in its entirety, citing the arguments in our opposition brief and noting on the record that Prepayd successfully pled a claim for constructive eviction which, if proved at trial, would cut off Prepayd’s duty to pay rent starting on the date Prepayd surrendered possession of the premises. Settlement discussions are ongoing.
- Established one of the first comprehensive Internet monitoring and enforcement programs, and we currently direct numerous international online protection programs to address copyright and trademark infringement, rights of publicity, grey market infringement, product distribution diversion, disclosure of private facts and defamatory statements. To this day, our Internet monitors work to address and remove unauthorized content from online sites. Enforcement programs for entertainment properties have included Anchorman 2, Batman, Casper, Interstellar, The Godfather, Harry Potter, The Hunger Games, Indiana Jones, Iron Man, Jurassic Park, Kung Fu Panda, The Looney Tunes, The Lord of the Rings, Madagascar, The Matrix, Mighty Morphin Power Rangers, Mission: Impossible, Noah, Pirates of the Caribbean, Shrek, The Simpsons, Spider-Man, Star Trek, Star Wars, Teenage Mutant Ninja Turtles, Terminator: Genisys, Titanic, Tomb Raider, Toy Story, Transformers, Twilight Saga, Wolf of Wall Street, The X-Files and X-Men. Celebrity enforcement programs have included The Doors, Harrison Ford, Melanie Griffith and Tom Hanks. Corporate rights enforcement programs include Chanel, Louis Vuitton, Pioneer, QSC Audio Products, Samsung , Sony Electronics and Toto USA.
- Defended Hasbro in a putative class action brought on behalf of all California purchasers of a Tinkertoy set. The Plaintiff alleged that Hasbro engaged in false advertising based on the sale of Tinkertoy sets that included certain connector pieces in the images of structures featured on the packaging that were not included in the set. Plaintiff’s proposed class included customers who purchased the set from authorized retailers as well as second-hand sellers of the set. We successfully opposed certification of the class.
- Southwestern Law School, J.D. (2005) cum laude, CALI Award Recipient for Excellence in Contract Law, Wildman Merit Scholarship Recipient, Dean’s Merit Scholarship Recipient
- California State University, Northridge, B.A., Sociology (2002) summa cum laude, James Russel Simpson Merit Scholarship Recipient, Kian Kwan Sociology Scholarship Recipient
- California (2005)
- U.S. District Court for the Central District of California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. Court of Appeals for the Ninth Circuit
- U.S. Court of Appeals for the Second Circuit
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