David J. Steele

David Steele specializes in trademark and Internet law.

David focuses much of his time protecting famous and well-known trademarks from infringement of all types, especially online infringement. He has successfully handled hundreds of cybersquatting matters, including numerous federal cybersquatting cases. David understands that the client’s business objectives play an integral role in every legal matter he handles—and he is driven to provide exceptional service, results, and value.

Gold band-ranked in World Trademark Review’s WTR 1000, David is described as an “online enforcement mastermind in hot demand among house-hold name companies.” “He brings decades of experience and a first-class team of litigators to his cases, which produce stellar results for their clients. That is why so many major brands turn to him to aggressively protect their brands.”

According to one client, “There is no one in the world who can match David Steele’s expertise in the area of domain name enforcement and cybersquatting litigation. He is unique because he has both a deep technical background and decades of experience litigating and shaping the case law … .“ Another client comments “David’s professionalism, responsiveness and consideration for our ultimate objectives are second to none. David is by far the best there is in trademark enforcement counselling and cybersquatting litigation.” Other clients comment that “David is knowledgeable, hardworking, responsive and handles small and large matters with the same degree of urgency and care. He always puts clients’ interests before his own and has unmatched expertise in internet-related matters. He is also very diligent; there is never a loose end which is not attended to. David thinks outside the box and is exceptionally creative. His insight on cyber issues is highly beneficial and the quality of his service is great – he is responsive on all matters, large and small.”

Before attending law school, David worked on the design and implementation of high-speed computer networks and Internet engineering as engineering manager at Fibertron Corporation. He formerly served as a technical advisor and member of Networld+Interop’s Network Advisory Board. As a member of the Boston working group, he worked alongside the United States Government to transfer the technical coordination of certain aspects of the Internet to ICANN (the organization responsible for coordinating important aspects of the Internet, including the domain name system). David’s strong technical understanding of the Internet allows him to provide both practical and creative solutions to online infringement.

David is an adjunct professor at Loyola Law School in Los Angeles, where he has taught trademark law and Internet law since 2001.

Education: Loyola Law School, Los Angeles (J.D., 2000); California State Polytechnic University, Pomona (B.S. in Electrical Engineering, 1997)

State Admissions: California, 2000

Federal Admissions: United States Patent and Trademark Office; United States Court of Appeals, Ninth Circuit; United States Court of Appeals, Tenth Circuit; United States District Court, Central District of California; United States District Court, Northern District of California; United States District Court, District of Colorado

Service Areas: Intellectual Property; IP Litigation; Internet Law & Domain Names; Business Litigation; Trademarks; Copyright Law; Trade Secret Litigation; Patent Procurement; Post Grant Proceedings; IP Business Strategy & Agreements; Technology Transfer; Health & Life Sciences M&A Transactions; Health & Life Sciences

Represented a multinational communications company in complex cybersquatting action involving another company’s registration and use of 663 domain names confusingly similar to client’s trademarks; obtained judgment for $33,150,000—the largest cybersquatting judgment granted to date—and permanent injunction
Represented a jewelry and clothing manufacturer in cybersquatting and trademark infringement action; obtained judgment and permanent injunction
Represented an eyeglasses manufacturer in trademark and copyright infringement action against direct competitor; successfully resolved the matter through settlement
Represented a sunglasses manufacturer in an in rem cybersquatting action involving the registration and use of 44 domain names confusingly similar to client’s trademarks and used to sell counterfeit goods; obtained judgment and the transfer of all the infringing domain names
Represented a professional sports team in a patent infringement action; successfully resolved the matter through settlement
Represented a restaurant franchise in connection with trademark and trade dress action against a competitor; obtained both preliminary and permanent injunctions against the competitor’s use of the trademarks and trade dress
Represented a multinational communications company in complex cybersquatting action involving another company’s registration and use of 241 domain names confusingly similar to client’s trademarks; obtained judgment for $24,100,000 and permanent injunction
Represented a multinational computer technology company in complex cybersquatting action involving the registration and use of over 1,000 domain names that were confusingly similar to client’s trademarks; obtained consent judgment and permanent injunction pursuant to confidential settlement agreement
Represented a frozen dessert franchise in trademark and service mark action; obtained stipulated judgment and permanent injunction
Represented a luxury retailer in complex cybersquatting action involving the registration and use of over 25 domain names confusingly similar to client’s trademarks; obtained permanent injunction pursuant to confidential settlement agreement

Speaking Engagements

“Policing Domain Names – Enforcement Options Against Infringing and Malicious Domains,” Practising Law Institute (August 2023)
“The New Digital Frontier: The Legal Minefields of Web 3.0, the metaverse and NFTs,” Tucker Ellis In-House Counsel Summit (October 2022)
“Big League Branding: Trademark Issues in Professional Sports,” 2020 In-House Counsel Summit Webinar, Tucker Ellis LLP (September 2020)
“The Impact of GDPR on Enforcing Intellectual Property Rights on the Internet,” Harvard Law School, Cambridge, Massachusetts (March 2019)
“Startup C.Y.A.: Cover Your Assets,” Keynote Speaker, DTLA Startup Pitch Competition, InnovateLA 2017, Los Angeles, California (November 2017)
“Latest Developments in Cybersquatting Law,” DRI Intellectual Property Litigation Conference, Chicago, Illinois (May 2017)
“Cybersquatting and Internet Domain Names: A Practical Update for 2015,” 2015 In-House Counsel Summit, Tucker Ellis LLP, Cleveland, Ohio (October 2015)
“Journalist Law School – Digital Media and Delivery and the Internet,” Loyola Law School, Los Angeles, California (May 2014)
“Internet Domain Names – A Practical Update for 2013,” ALM 6th Annual IP Trademark, Copyright & Licensing Counsel Forum, New York, New York (October 2013)
“Journalist Law School – Intellectual Property Law,” Loyola Law School, Los Angeles, California (June 2012)
“Beating the Cybersquatters and Domain Name Tasters,” MarkMonitor Forum, San Francisco, California (November 2008)
“Shootout at the ICANN Corral: Domainers v. Trademark Owners,” Trademark Office Comes to California Program, California State Bar Association, Marina del Rey, California (March 2008)
“Internet Fraud,” Intellectual Property and the Internet Conference, California State Bar Association Santa Monica and San Francisco, California (August 2007)
“Domain Name Legal Risks,” Domain Roundtable, Seattle, Washington (April 2006)
“Advertising And Search – Monetization and Traffic,” Intellectual Property Section’s Internet Law Conference, California State Bar Association, Beverly Hills, California (September 2006)
“Domain Names – Practice Update,” Winter Section Education Institute, California State Bar Association, Monterey, California (January 2004)