Joshua L. Simmons - Associate

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Joshua L. Simmons

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New York
Phone: +1 212-446-4989
Fax: +1 212-446-6460
Overview Events Publications

Professional Profile

Joshua Simmons focuses his practice on intellectual property litigation and counseling, including copyrights, patents, and trademarks. He routinely represents clients in litigations and other disputes around the country—particularly complex cases and those of first impression. These high profile matters involve a range of industries, including computer software and services, consumer and leisure products, financial services, health care and pharmaceuticals, media and entertainment—such as electronic games, film, news, publishing, television and theatre—and telecommunications. He also advises clients on intellectual property matters that intersect with antitrust, computer and Internet fraud, false advertising, privacy, and social media issues, as well as contract and licensing disputes.

In addition to maintaining a full-time litigation practice, Mr. Simmons is a frequent speaker and has authored numerous articles on emerging trends in intellectual property. He is an active member of the ABA Intellectual Property Law Section, chairing its Copyright Law Reform Task Force and serving as vice chair of its Copyright Division, as well as being the immediate past chair of the Copyright & Social Media committee. He also is an appointed member of the IPO Software & Business Methods committee, and the INTA Internet Committee.

In 2014 and 2015, Super Lawyers named Mr. Simmons a “Rising Star” for his intellectual property litigation practice. In addition, he was part of the Kirkland team that was honored by Managing Intellectual Property magazine for its work on “Milestone Case of the Year” Oracle America v. Google. It also recognized Kirkland’s intellectual property department in 2014 as US Trademark Contentious Firm of the Year, and in 2013 as Copyright Firm of the Year for the Northeast region.

Mr. Simmons’s pro bono matters include the representation of asylum seekers before the Department of Homeland Security—for which he twice has received the Immigration Equality Safe Haven Award—as well as matters for the American Theatre Wing, Comic Book Legal Defense Fund, and other IP-related pro bono projects.

Representative Matters

Copyright Litigation

Cisco Systems, Inc. v. Arista Networks, Inc. (N.D. Cal./I.T.C.): Representing Cisco in a multiforum copyright and patent infringement litigation concerning Arista’s use and copying of Cisco’s proprietary command line technology.

Fox News Network, LLC v. TVEyes Inc. (S.D.N.Y.): Won summary judgment for Fox News in a copyright infringement action against a media monitoring service, including that copying Fox News’ content to permit the service’s users to view content by date and time and download video clips did not constitute fair use.

Oracle Am., Inc. v. Google Inc. (Fed. Cir.): Obtained reversal in Oracle's highly publicized appeal of a district court order finding elements of its Java Application Programming Interfaces, which Google admitted to have copied when creating its Android operating system, uncopyrightable, as well as a remand for further proceedings on the issue of fair use.

Alexander v. Murdoch (S.D.N.Y./2d Cir.): Obtained dismissal and won appeal for Fox Entertainment Group, along with other defendants, in a lawsuit alleging that Fox's Modern Family television series infringes the plaintiff's copyright in his treatment and proposed pilot script, as well as other state law rights.

Taymor v. 8 Legged Productions, LLC (S.D.N.Y.): Defended the producer of the Broadway musical Spider-Man: Turn Off the Dark against copyright, breach of contract and other claims brought by the show's former director, Julie Taymor.

Tetris Holding, LLC v. Xio Interactive Inc. (D.N.J.): Won summary judgment for the makers of the world-famous "Tetris" electronic game in a copyright and trade dress lawsuit against an infringing game maker.

Fairey v. The Associated Press (S.D.N.Y.): Represented the AP and won summary judgment on the issue of fair use in a declaratory judgment suit brought by Shepard Fairey, in which the AP asserted copyright infringement claims, among others, arising out of his unauthorized use of the AP's photo of President Obama to create a poster and commercial merchandise.

Patent Litigation

Cisco Systems, Inc. v. Arista Networks, Inc. (N.D. Cal./I.T.C.): Representing Cisco in a multiforum copyright and patent infringement litigation concerning Arista’s use and copying of Cisco’s proprietary command line technology.

IpLearn LLC v. K12 Inc. (D. Del.): Defended K12 and won multipatent infringement action involving computer-assisted learning technology, resulting in the parties stipulating to the dismissal of one patent as not infringed, and the other patent being held invalid on summary judgment because it was directed to unpatentable subject matter.

JobDiva, Inc. v. Monster Worldwide, Inc. (S.D.N.Y.): Represented JobDiva in a multipatent infringement action involving resume search technology.

Ericsson Inc. v. Samsung Electronics Co. (E.D. Tex./I.T.C.): Represented Samsung in a multipatent, multiforum litigation—including back-to-back ITC trials—involving GSM, W-CDMA, LTE and 802.11 (Wi-Fi) wireless telecommunication standard essential patents, including claims concerning commitments to license on fair, reasonable and non-discriminatory (FRAND) terms and conditions.

Trademark Litigation

Bath & Body Works Brand Mgmt., Inc. v. Summit Entm't, LLC (S.D.N.Y.): Defended BBW against claims by the producer of The Twilight Saga film series that BBW's Twilight Woods product line infringes Summit's trademark rights, including defeating Summit's motion for summary adjudication.

Tetris Holding, LLC v. Xio Interactive Inc. (D.N.J.): Won summary judgment for the makers of the world-famous "Tetris" electronic game in a copyright and trade dress lawsuit against an infringing game maker.

Car-Freshner Corp. v. DIRECTV, Inc. (N.D.N.Y.): Defended DIRECTV in a trademark infringement suit arising out of its use of a pine tree-shaped air freshener in a promotional campaign.

NES Rentals (W.I.P.O.): Obtained multiple transfer orders in domain name disputes under ICANN's Uniform Domain Name Dispute Resolution Policy.

Transactional, Counseling, and Non-Litigation Enforcement Matters

Representing well-known author J.K. Rowling in copyright and trademark matters relating to the popular Harry Potter book series and films, including protecting the famous works against infringement on the Internet.

Representing Twentieth Century Fox Film and Twentieth Century Fox Television in various trademark matters, including enforcement matters concerning the popular television series Modern Family.

Counseled global private equity investment firm on potential acquisition of content delivery network.

Negotiated royalty-free trademark licensing agreement on behalf of nonprofit organization in order to resolve trademark infringement dispute.

Represented Bain Capital on trademark matters in connection with its acquisition of the Apple Leisure Group.

Memberships & Affiliations

American Bar Association, Intellectual Property Law Section:
Copyright Division, Vice Chair, 2015–present
Copyright Law Reform Task Force, Chair, 2013–present
Copyright & Social Media Committee, Chair, 2013–15; Vice Chair, 2012–13
Specialized IP Issues Division, Secretary, 2011–12

Intellectual Property Owners Association:
Software & Business Methods Committee, Member, 2013–present

International Trademark Association:
Internet Committee, Member, 2016–present

Association of the Bar of the City of New York:
Information Technology Law Committee, Member, 2009–10


Law Journal Publications

Inventions Made For Hire, 2 N.Y.U. J. Intell. Prop. & Ent. Law 1 (2012)

Catwoman or the Kingpin: Potential Reasons Comic Book Publishers Do Not Enforce Their Copyrights Against Comic Book Infringers, 33 Colum. J.L. & Arts 267 (2010) (reprinted in 2010 Entm't, Publ'g and the Arts Handbook)

Buying You: The Government's Use of Fourth-Parties to Launder Data About "The People," 2009 Colum. Bus. L. Rev. 950 (2009)

Other Publications

The Next Great Copyright Office, Landslide, July/August 2015, at 22

2014 Social Media in the News, ABA Copyright & Social Media Committee

The Digital Millennium Copyright Act and Its Effect on Copyright Owners and Service Providers Online, in Intellectual Property Law in Cyberspace (2d ed. Supps. 2012-2014)

2013 Social Media in the News, ABA Copyright & Social Media Committee

Social Media in the Digital Millennium, Landslide, May–June 2013, at 26


Double the Opportunity: Patent and Copyright Protection for Software After Alice and Oracle, 43rd IPO Annual Meeting (Sept. 28, 2015)

Global Trademark Portfolio Management in 2015, Intellectual Property Institute, National LGBT Bar Association's 2015 Lavender Law Conference (Aug. 7, 2015)

Fair Use: Which Factors Count in Different Circuits?, IPCENTRAL at the ABA Annual Meeting (July 31, 2015)

New Cases in Copyright Law — Internet and Beyond, Fundamentals of Copyright Law in the Data Era 2015 (June 25, 2015)

Avoiding Legal and Ethical Social Media Pitfalls, 22nd Annual Technology & Law Seminar (May 20, 2015)

From Big Screen to Computer Screen, Columbia Law School Entertainment, Arts and Sports Law Society's Spring Symposium (Apr. 17, 2015)

A Year in Review of Significant Social Media Related Cases, ABA 30th Annual Intellectual Property Law Conference (Mar. 27, 2015)

IP Assets: Obtain and Protect, National LGBT Bar Association's 2014 Lavender Law Conference (Aug. 23, 2014)

An Update on Software Copyright Protection After the Landmark Oracle v. Google Decision, ABA Section of Intellectual Property Law (Aug. 14, 2014)

Where are We and Where are We Headed? U.S. Copyright Review, IPCENTRAL at the ABA Annual Meeting (Aug. 7, 2014)

Promoting Progress in Social Media: Patentability & Copyrightability Issues, ABA 29th Annual Intellectual Property Law Conference (Apr. 4, 2014)

IP Protection in a Networked World: Copyright & Trademark Enforcement in Social Media, ABA 28th Annual Intellectual Property Law Conference (Apr. 3, 2013)

Trademark Enforcement in Social Media, State Bar of California (Sept. 11, 2012)

The FCC's Recently Proposed Network Neutrality Rules, NYC Bar Association's Information Technology Law Committee (Oct. 27, 2009)

Other Distinctions

Super Lawyers Magazine, "Rising Star," Each year 2014-15

Immigration Equality Safe Haven Award, Recipient, 2014

Immigration Equality Safe Haven Award, Recipient, 2012

Kirkland & Ellis New York Recruiting Committee, Member, 2015–present

Kirkland & Ellis New York Associates Committee, Member, 2012–present

Kirkland & Ellis New York Mentoring Committee, Member, 2013–present

Kirkland & Ellis ALLSA Diversity Initiative, Liaison to Columbia Law School Outlaws, 2011–present; Liaison to Yale Law School OutLaws, 2014–present

Kirkland & Ellis Pro Bono Service Award, Recipient, Each year 2010–14

Kirkland & Ellis Diversity Fellowship, Recipient, 2009

Press Coverage

Legal Department of the Year, Litigation: Oracle Corp., The Recorder, Nov. 11, 2015

TVEyes Judge Shuts Down Infringing Features, Law360, Nov. 9, 2015

Panelists Discuss Software Protection in Post-Alice, Post-Oracle World, IPO Daily News, Sept. 29, 2015

TVEyes Downloads Aren't Fair Use, Judge Says, Law360, Aug. 25, 2015

IPO Annual Meeting Addresses Patent and Copyright Protection for Software After Alice and Oracle, IPO Daily News, Aug. 18, 2015

High Court Won't Hear Google Appeal Over Oracle Copyrights, Law360, June 29, 2015

SG Tells High Court It Backs Oracle In IP Row With Google, Law360, May 26, 2015

#IPLSpring CLE Review: A Year in Review of Significant Social Media Related Cases, ABA-IPL Law Student Action Group, Apr, 24, 2015

UK Prosecution Spotlights Dangers For Manga Readers, Comic Book Legal Defense Fund, Oct. 29, 2014

Bath & Body, Summit Put A Stake In $300M 'Twilight' IP Row, Law360, Sept. 23, 2014

Fox News Hits TVEyes With Suit Over Copied Content, Law360, July 30, 2014

'Spider-Man' Producers End Copyright Battle With Taymor, Law360, Apr. 10, 2013

Oracle Court's Java Ruling Will Hurt Innovation: Microsoft, Law360, Feb. 20, 2013

Oracle Urges Fed. Circ. To Toss Google's Java Copyright Win, Law360, Feb. 12, 2013

2nd Circ. Affirms Toss Of 'Modern Family' Idea Theft Suit, Law360, Nov. 14, 2012

Julie Taymor, 'Spider-Man' Producers File Dueling Motions to Dismiss Lawsuits, The Hollywood Reporter, Mar. 22, 2012

Comic books, not law books, N.Y. Post, Mar. 22, 2012

'Spider-Man' Producers Strike Back At Ex-Director Taymor, Law360, Jan. 17, 2012

Don't Akanoc it if you… oh, never mind…, Likelihood of Confusion, Sept. 13, 2011

'Modern Family' Didn't Rip Off Writer's Pilot: Judge, Law360, July 18, 2011

California's Reader Privacy Act: A First Step in a New Direction, Tech. & Marketing L. Blog, May 2, 2011

Comics and Copyright, Entm't & Media L. Signal, Mar. 14, 2011

Supreme Court to Hear Case on Copyright vs. the First Amendment, Comic Book Legal Defense Fund, Mar. 14, 2011

US gov't data-laundering: using corporate databases to get around privacy..., Boing Boing, Jan. 25, 2010


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