Overview

David Caplan focuses his practice on intellectual property law. His practice involves a balance of internet law and traditional intellectual property law, including all types of transactions and litigation concerning copyright, trademark, infringement, trade dress infringement, anti-counterfeiting, cybersquatting (including through ICANN’s domain name dispute resolution policy), reverse confusion, dilution, unfair competition, right of publicity, and “idea submission” cases throughout the United States. Mr. Caplan’s practice also involves all facets of intellectual property litigation, including seizure orders, contempt orders, and appellate and Supreme Court practice.

Mr. Caplan has handled most every type of internet-related intellectual property issue and has developed internet monitoring and enforcement programs for some of the world’s largest media, entertainment and technology companies, as well as celebrities. These programs involve protecting copyrights, trademarks and other intellectual property rights against a wide variety of infringements on the internet. Mr. Caplan has handled disputes relating to thousands of internet counterfeiters and other infringers from across the world. He has recovered hundreds of infringing domain names, stopped the distribution of infringing content by hundreds of websites, and halted the distribution of infringing products by thousands of Internet auction sellers. Mr. Caplan’s internet law practice also involves counseling and transactional services associated with internet business issues and intellectual property issues raised by the iInternet. He has negotiated and drafted internet-related contracts and advised clients regarding the implications of contracts to their internet businesses.

Prior to joining Kilpatrick Townsend, Mr. Caplan was a partner 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.

Mr. Caplan has assisted his clients by conducting training sessions for customs and law enforcement representatives, as well as internet service providers. He has also presented seminars regarding internet litigation and enforcement, and has been interviewed for publications and broadcasts on topics involving intellectual property issues.

From 2004 to 2008, Mr. Caplan was recognized as a Southern California “Super Lawyer” by Los Angeles magazine, ranking him in the top 2.5 percent of Southern California lawyers age 40 or younger. Mr. Caplan was recommended by Legal 500 US in 2018 and the four years immediately preceding for Trademark Litigation.

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Experience

Represented Zynga in litigation against a network of individuals and entities which sold guidebooks containing “secrets” to Zynga’s games to unwitting consumers. In reality, the guidebooks merely replicated elements from Zynga’s games, and misused Zynga’s trademarks in an effort to dupe consumers. We disrupted the networks and recovered dozens of domain names used by the network.

Represented Overture Services (Yahoo!’s predecessor in the paid search business) in a group of a fourteen separate lawsuits brought by Los Angeles car dealerships who claimed that paid search ads featuring the dealers’ names infringed their common trademark rights. The plaintiffs also alleged various state law business torts. Overture was concerned that the lawsuits could set a costly precedent if Overture could be held liable for the conduct of online advertisers. We resisted the state law claims using the Communications Decency Act’s immunity for ISPs, and through aggressive discovery established the weakness of the dealership’s trademark rights. We were then able to obtain settlements at a nuisance value for Overture.

Defended Burberry Group, PLC, Burberry Limited (NY) and Burberry Limited (UK) against right of publicity, trademark infringement, unjust enrichment, quantum meruit and common law unfair competition claims brought by the Estate of Humphrey Bogart. Our client had created a historical timeline depicting the evolution of Burberry’s culture, products and people, which was made available by Burberry on the Facebook social networking platform. The timeline included an image of Humphrey Bogart from 1942 wearing a Burberry trench coat from the final scene of the motion picture, “Casablanca.” In connection with this image, Burberry included the following description: Humphrey Bogart wearing a Burberry trench coat in the final scene of Casablanca (1942). A few hours before Bogart LLC, filed this action in California, we filed a declaratory relief action in the Southern District of New York. After litigating two cases on opposite coasts, the cases were settled on terms favorable to our clients.

Represented a manufacturer of a liquid and tablet herbal supplement in a false advertising class action. We successfully opposed certification of the class as to the tablet product, which significantly narrowed the available damages to the plaintiffs. We were then able to settle the case on favorable terms for the client.

Represented Philips in a trademark infringement case brought against manufacturers of infringing DVD recorders. We obtained a $120 million judgment and permanent injunction. In addition, we obtained contempt sanctions of millions of dollars, incarceration of the defendant’s U.S. based executive, seizures at various locations, and orders to freeze all of the defendants’ assets and repatriate millions of dollars transferred overseas.

Represented Overture, Yahoo!’s predecessor in the paid online search business, in an action for computer trespass and violation of the federal Computer Fraud & Abuse Act. The defendants had been allowed access to Yahoo!’s data feed to manage advertiser accounts and, when Overture shut off access, Defendants claimed that Overture had intentionally interfered with their contracts. In advance of the claim being filed, Overture preemptively filed a complaint for computer trespass alleging that defendants had used robotic agents to invade Overture’s computer system and manipulate its bidding system. The case settled favorably after filing of Overture’s summary judgment motion.

Represented Saban Entertainment, Inc. against a complaint for copyright infringement, breach of contract, inducing breach of contract, and various associated state law claims against owners and broadcasters of the Mighty Morphin Power Rangers, alleging that the Power Rangers infringed a property which the plaintiff allegedly owned. The plaintiff sought $1 billion and injunctive relief. We filed a motion to dismiss all of plaintiff's claims and the district court granted the motion, dismissing all of the plaintiff's claims. Plaintiff chose only to pursue its inducing breach of contract on appeal. In our appeal, we argued that the claim was preempted by the Copyright act. The case was then settled on terms favorable to the client.

Represent Summit Entertainment in this copyright infringement and computer fraud and abuse act case brought against a hacker who had breached servers for Summit’s “Twilight” films and leaked video and images online. After identifying an earlier online “Tweet” of the leaked images, we worked with investigators and local counsel across the world, including Australia, Poland, Brazil, Italy, France, Florida, and New Jersey, to trace the distribution chain up to the original source, the hacker. We filed civil and criminal cases in Argentina against the hacker, and are litigating this case in the Central District of California.

Represented Zynga in a litigation enforcement program targeting high value resellers of virtual chips used in Zynga’s online poker game, with the goal of disrupting chipseller website networks, obtaining money judgments, and canceling or transferring ownership of high value domain names. This coordinated effort included 22 lawsuits, with 33 judgments in Zynga’s favor, and the transfer or cancellation of hundreds of domain names that had been the primary vehicles for the illicit businesses.

Represented MGA Entertainment Inc., the owners of the Bratz property, in one of the first cases to address allegations of a wrongful ISP takedown notice under the DMCA. After extensive discovery, we filed a summary judgment motion and argued that our client’s takedown notice was sent in good faith. The court granted our motion for summary judgment.

Dudnikov v. MGA Entertainment, Inc., 410 F.Supp.2d 1010, (D. Colo. 2005).

Represented Paramount Pictures Corporation in copyright litigation. Paramount and Universal had plans to launch trailers for summer tent-pole films during the Super Bowl. An unknown subject created a YouTube account and posted the trailers online. We worked with our clients to identify the subject and prevented any further violations by this infringer.

Successfully filed a World Intellectual Property Organization (WIPO) complaint on behalf of Yahoo!. The firm prevailed in a WIPO proceeding through panel appointment which resulted in the transfer of an important domain name for Yahoo!.

Represented Paramount Pictures Corporation just weeks before the release of its holiday blockbuster motion picture, "Varsity Blues," the registrant of the domain name VARSITYBLUES.COM made good on a prior threat and launched a web site depicting partial birth abortions at that domain name location. In representing Paramount, we obtained a Preliminary Injunction ordering the immediate transfer of the domain name to Paramount.

Defended one of the earliest online gaming companies against a claim that its web site design infringed the trade dress of the plaintiff's web site. We filed a motion for summary judgment and argued that the plaintiff's alleged trade dress, for a lotto game, was functional and had not developed secondary meaning. Based on the strength of the motion, the plaintiff dismissed its trade dress claim with prejudice.

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Education

Northeastern University, J.D. (1995)

Williams College, B.A., Economics (1992)

Admissions

California (1995)

Massachusetts (2008)

Court Admissions

U.S. District Court for the Central District of California

U.S. District Court for the Eastern 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. District Court for the District of Colorado

U.S. Court of Appeals for the Ninth Circuit

U.S. Supreme Court

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Professional & Community Activities

International Anti-Counterfeiting Coalition, Member

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