Carlo F. Van den Bosch is a partner in the firm's Intellectual Property Practice Group. He is the co-chair of this practice group.
Areas of Practice & Professional Qualifications
Mr. Van den Bosch specializes in intellectual property transactions and litigation, with substantial expertise in high-tech, Internet, consumer products, and entertainment and media matters. He has extensive experience in the protection of trademarks, inventions, works of authorship, and trade secrets across a variety of industries, such as e-commerce, software, television, healthcare, apparel, food and beverage, finance, real estate, and entertainment, among others.
Action Sports Representation
Mr. Van den Bosch is a member of the firm's Action Sports Industry Team. He represents the intellectual property interests of a variety of sports organizations, companies, and retailers including the Surf Industry Manufacturers Association (SIMA), the International Surfing Association, Sessions, Reef, TaylorMade, and Sport Chalet.
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (plaintiff's counsel)
Taylor Made Golf Company, Inc. v. MJT Consulting Group, LLC,
265 F. Supp. 2d 732 (N.D. Tex. 2003) (plaintiff's counsel)
Mr. Van den Bosch handles a variety of high-stakes IP litigation across many industries, including high-tech, e-commerce, software, entertainment media, healthcare, apparel, food and beverage, finance, and real estate. Several of his trademark cases have yielded published decisions, including Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999), a seminal case in the area of domain name and meta tag infringement. Representing the plaintiff, Mr. Van den Bosch prevailed both at the appellate level and at the subsequent jury trial, where his client was awarded substantial monetary and punitive damages. In another published case, Taylor Made Golf Company, Inc. v. MJT Consulting Group, 265 F. Supp. 2d 732 (N.D. Tex. 2003), Mr. Van den Bosch successfully represented the plaintiff against a distributor of counterfeit merchandise.
Most recently, in Hana Financial, Inc. v. Hana Bank (C.D. Cal. Case No. CV07-1534-PA), Mr. Van den Bosch secured a final summary judgment finding non-infringement in favor of his client Hana Bank, one of the largest financial institutions in Korea.
In Wyatt Technology Corp. v. Smithson, et al. (C.D. Cal. Case No. CV05-1309 DT), Mr. Van den Bosch defended the defendants in a high-tech trade secret dispute involving dynamic light scattering technology used to measure the size and distribution of molecular particles in liquid solutions. Mr. Van den Bosch prevailed on summary judgment and secured an award of attorneys’ fees and punitive damages for his clients.
Other notable cases include the successful defense of Disney and ABC in a trademark infringement suit filed by the owner of certain comic strip characters, the representation of ESPN in a trademark and copyright infringement suit involving a reality television program, the representation of Fox in a trademark infringement suit over the name of one of its television networks, and the representation of The Gator Corporation in multidistrict trademark litigation involving pop-up Internet advertising.
Intellectual Property Portfolio Management
Mr. Van den Bosch is proactive in evaluating, securing and protecting the intellectual property rights of his clients on a global basis using a network of foreign associates. He routinely reviews and analyzes companies' intellectual property portfolios, and designs long-term strategies for securing and maintaining maximum protection and value for clients' intellectual property assets.
Mr. Van den Bosch's expertise extends to corporate and transactional matters, including the negotiation and preparation of various Internet and technology agreements. He has negotiated technology license and development agreements, VAR and OEM agreements, website development agreements, Internet content licenses, joint marketing agreements, domain name leases, distributorship agreements, and trademark, copyright and patent assignments and licenses.
Southern California Super Lawyers, Intellectual Property Litigation, 2005, 2006, 2007, 2008
- Editor, Sheppard Mullin Intellectual Property Law Blog (2005 - Present)
- Quoted, Where Everyone Knows Your Name, Daily Journal (December 2003)
- Quoted, Copyright Law: A Primer for Training Professionals, Training Magazine (December 2002)
- Quoted, New Protection Against Online Pirates, Folio Magazine (September 2000)
- Profiled, Scene Stealing, Daily Journal, Verdicts & Settlements, Entertainment & Intellectual Property Issue (February 2000).
- Quoted, E-nvasion of Privacy, Daily Journal, California Law Business (January 2000).
- Author, Global Defense - International Domain Names, Daily Journal, CyberEsq. Ed. (November 1999).
- Author, Legal Aspects of the Year 2000 Problem, co-author, 39 Santa Clara L. Rev. 657 (1999).
- Author, What Every Attorney Should Know About Trademarks, American Bar Association, Tort & Insurance Practice Section (May 1998).
- Author, The Intellectual Property Audit: Protecting & Managing Intangible Assets, Orange County Business Journal (March 1998).
- Author, The Hidden Dangers Of Internet Meta Tags, Orange County Business Journal (November 1997).
- Author, The Millennium Bug, Intellectual Property Today (June 1997).
- Author, Cyber Jurisdiction: The Long Arm Of The Internet, Orange County Business Journal (June 1997).
- Author, The Year 2000 Problem: The Information Age's Greatest Embarrassment, Intellectual Property Worldwide (Spring 1997).
- The Deal, 02.12.2019
- National Law Journal: Custom Publishing Supplement, 05.2016
- Law360, 02.26.2016
- Law360, 11.17.2015
- Daily Journal, 04.22.2015
- Supreme Court Update - Hana Financial v. Hana BankThe National Law Review, 02.2015
- Supreme Court Resolves Circuit Split on Trademark TackingThe Recorder, 01.23.2015
- Sheppard Mullin Secures Trademark Win in U.S. Supreme CourtDaily Journal, 01.22.2015
- Law360, 01.21.2015
- Daily Journal, 02.09.2011
- Daily Journal, 04.17.2010
- Law360, 04.01.2010
- Scene StealingDaily Journal, 02.2000
- Panelist, The Internet and Entertainment Law, University of Southern California Law School (September 2000).
- Panelist, The New Frontier: "Digital Domain Law", Southwestern University School of Law (March 2000).
Member, Intellectual Property, Science and Technology Sections, American Bar Association
Member, Intellectual Property Law Section, State Bar of California
Member, American Intellectual Property Law Association (AIPLA)
Member, International Trademark Association (INTA)
Member, Orange County Bar Association
J.D., University of Southern California
B.S.M.E., University of California, Los Angeles