PROFESSIONALS

Daniela Caro-Esposito

Associate
T: 908.518.6379
F: 908.654.7866
E: dcaro-esposito@lernerdavid.com
20 Commerce Drive
Cranford, New Jersey 07016
vCard

Back

Back

Daniela Caro-Esposito practices in all areas of intellectual property, with a focus on litigation as well as all aspects of patent and trademark prosecution along with administrative proceedings involving patents and trademarks. Daniela is a co-author of a chapter in New Jersey Federal Civil Procedure ("Special Considerations in Cases Involving Intellectual Property,” New Jersey Law Books, 2022-23), and is also a Barrister in the John J. Gibbons Inn of Court, the first IP Inn of Court of its kind in New Jersey involving attorneys and judges.

Prior to practicing law, Daniela’s background in science piqued her interest in the field of intellectual property. During law school, she became dedicated to her Intellectual Property courses and was chosen to receive the Award of Excellence in Intellectual Property Law in her graduating class. Daniela earned a concentration in Intellectual Property Law along with her law degree.

Daniela’s client counseling skills and legal strategies have their foundation in a robust law school experience. She devoted much of her time in law school to gaining hands-on experience in various facets of the legal profession. She worked as a Research Assistant to Professor David Opderbeck, Co-Director of the Gibbons Institute of Law, Science & Technology at Seton Hall University School of Law. Concurrently, she interned in the legal department of a corporation where she worked closely with in-house attorneys in litigation, employment law, and compliance. Daniela was also a legal intern with the New Jersey Attorney General, where she worked in the Cybersecurity and Internet Privacy Sector. Finally, Daniela was a student advocate in her school’s Civil Litigation Clinic where she did various pro bono work for clients unable to afford representation.

Prior to joining the firm, Daniela served as a law clerk to the Honorable Owen C. McCarthy, J.S.C. Her experience as a law clerk honed her research and legal writing skills in addition to instilling invaluable insight into the judicial system. A bonus was the experience Daniela gained as a small claims mediator for the court, with judge-initiated training in negotiations.

Overview

Daniela Caro-Esposito practices in all areas of intellectual property, with a focus on litigation as well as all aspects of patent and trademark prosecution along with administrative proceedings involving patents and trademarks. Daniela is a co-author of a chapter in New Jersey Federal Civil Procedure ("Special Considerations in Cases Involving Intellectual Property,” New Jersey Law Books, 2022-23), and is also a Barrister in the John J. Gibbons Inn of Court, the first IP Inn of Court of its kind in New Jersey involving attorneys and judges.

Prior to practicing law, Daniela’s background in science piqued her interest in the field of intellectual property. During law school, she became dedicated to her Intellectual Property courses and was chosen to receive the Award of Excellence in Intellectual Property Law in her graduating class. Daniela earned a concentration in Intellectual Property Law along with her law degree.

Daniela’s client counseling skills and legal strategies have their foundation in a robust law school experience. She devoted much of her time in law school to gaining hands-on experience in various facets of the legal profession. She worked as a Research Assistant to Professor David Opderbeck, Co-Director of the Gibbons Institute of Law, Science & Technology at Seton Hall University School of Law. Concurrently, she interned in the legal department of a corporation where she worked closely with in-house attorneys in litigation, employment law, and compliance. Daniela was also a legal intern with the New Jersey Attorney General, where she worked in the Cybersecurity and Internet Privacy Sector. Finally, Daniela was a student advocate in her school’s Civil Litigation Clinic where she did various pro bono work for clients unable to afford representation.

Prior to joining the firm, Daniela served as a law clerk to the Honorable Owen C. McCarthy, J.S.C. Her experience as a law clerk honed her research and legal writing skills in addition to instilling invaluable insight into the judicial system. A bonus was the experience Daniela gained as a small claims mediator for the court, with judge-initiated training in negotiations.

Practices
Admissions

2019, New Jersey Bar
2020, United States Patent & Trademark Office
U.S. District Court for the District of New Jersey
Education

J.D., cum laude, Seton Hall University School of Law, 2019
B.S. Biology, Seton Hall University, 2015
Successes

Second Circuit Affirms Pepsi’s Victory in Super Bowl Commercial Case

The Second Circuit issued a ruling affirming a decision of the Southern District of New York that granted Pepsi summary judgment in a case relating to its popular 2016 Super Bowl commercial. That commercial was entitled the “Joy of Dance” and featured Janelle Monae. The Court found that the district court correctly determined that Pepsi’s commercial did not copy any protectable elements from plaintiff. The Court also recognized that Pepsi’s 2001 “Now and Then” commercial with Britney Spears had previously featured the idea of a “performer moving through various time periods or musical styles.” With respect to a related breach of contract claim, the Second Circuit also affirmed the grant of summary judgment to Pepsi, finding that “the district court properly found that there was no enforceable contract between the parties.”

Lerner David Defeats Motion for Preliminary Injunction in Trademark Case

On January 27, 2021, Judge Abrams in the United States District Court, Southern District of New York, denied the opponent’s motion for a preliminary injunction, finding that the opponent failed to demonstrate any likelihood of irreparable harm. In the opponent’s motion, it argued that our client simultaneously breached a license agreement and infringed its mark by selling genuine, authorized products through an Amazon Store. The Court addressed each of the opponent’s points individually in a detailed opinion and stated that the opponent’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” Moreover, the opinion expressed that our demonstration of Amazon’s search functions “cast further doubt on the plausibility” of the opponent’s argument. This decision will have a major impact in the case because the opinion lays the foundation that will make it difficult for the opponent to prove its case going forward.

Lerner David Obtains Favorable Settlement for Tama Group at International Trade Commission

Lerner David helped Tama successfully protect its patented product from copycat products. In partnership with John Deere, Tama Group accepted the challenge to help American farmers improve mechanical cotton harvesting. The result was TamaWrap™, a patented line of cotton bale wraps. When a Chinese competitor created a copy and tried to sell it in the US, Tama hired Lerner David. An ITC action was filed to prevent importation and sale of these copycat products. After an 18-month investigation, Tama received a favorable decision in an Initial Determination as to patent infringement, which led the Respondents to seek a settlement, resulting in removal of these copycat products from the market through patent expiration

New Jersey State Appeals Court Affirms Rutgers’ Victory in Open Public Records Act Lawsuit

A New Jersey state appeals court affirmed the dismissal of a state Open Public Records Act (“OPRA”) lawsuit against Rutgers. In this case, the plaintiff sought copies of Rutgers’ footage of a football game (referred to as “All-22” footage) against Pennsylvania State University. Rutgers denied plaintiff’s request for the videos on the basis that it was not permitted to share the videos with the public. Rutgers is a party to an agreement among other members of the NCAA Football Big Ten Conference to exchange their All-22 video footage, which also prohibits public dissemination of the videos. The plaintiff asserted that the videos were subject to OPRA, and brought suit after Rutgers’ denied the request for access to the videos. In August 2021, a New Jersey Superior Court ruled that the videos were exempt from OPRA, finding that (1) the video was proprietary to Rutgers; (2) the video fell within the competitive-advantage exemption under OPRA; and (3) that the copyright law's fair use doctrine was inapplicable. The plaintiff appealed. On August 15, 2022 a New Jersey state appeals court affirmed the dismissal of the suit, finding in favor of Rutgers on all points.

Lerner David Gets Appeal Dismissed, Preserving Win Against Preliminary Injunction Motion

Claiming trademark infringement, unfair competition, and breach of contract, Osram Sylvania, Inc. (“OSI”) filed a complaint on November 23, 2020 in the Southern District of New York against Lerner David client Ledvance, LLC (“Ledvance”). OSI moved for a preliminary injunction, arguing that Ledvance, which held a license from OSI, simultaneously breached its license agreement and infringed OSI’s mark by selling licensed products through an Amazon Store. Lerner David vigorously opposed the motion, emphasizing that OSI had not proven the harm necessary to support a preliminary injunction. On January 27, 2021, Judge Abrams of the Southern District of New York denied OSI’s motion for a preliminary injunction, finding that OSI failed to demonstrate any likelihood of irreparable harm. The Court addressed each of OSI’s points individually in a detailed opinion and agreed with Lerner David that OSI’s primary theory of irreparable harm “appear[ed] to lack any legal precedent.” Moreover, as the opinion explained, Lerner David’s explanation of Amazon’s search functions “cast further doubt on the plausibility” of OSI’s argument. The decision in the district court, combined with Lerner David’s success on appeal, not only preserves Ledvance’s right to operate its Amazon Store, but also lays the foundation for future proceedings in the district court, and will make it difficult for OSI to prove its case on the merits. Lerner David’s work here demonstrates its experience and skill in navigating trademark cases at both the trial and appellate levels, and responding rapidly and effectively to beat back requests for emergent relief.

Top

Daniela Caro-Esposito

Second Circuit Affirms Pepsi’s Victory in Super Bowl Commercial Case

Lerner David Defeats Motion for Preliminary Injunction in Trademark Case

Lerner David Obtains Favorable Settlement for Tama Group at International Trade Commission

New Jersey State Appeals Court Affirms Rutgers’ Victory in Open Public Records Act Lawsuit

Lerner David Gets Appeal Dismissed, Preserving Win Against Preliminary Injunction Motion