Joshua L. Simmons - Partner

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Joshua L. Simmons

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

Professional Profile

Joshua Simmons focuses his practice on intellectual property, including copyrights, patents, right of publicity, trademarks, and trade secrets. His practice includes litigation, counseling, and regulatory and legislative policy. 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, licensing, and domain name disputes.

Mr. Simmons routinely represents clients in appellate and trial courts around the country—particularly in 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. They have been featured in the mainstream media, legal periodicals, and trade press.

In addition to maintaining a full-time litigation practice, Mr. Simmons is a frequent speaker—including guest lectures at Harvard Law School, Columbia Law School, and Northwestern University—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 Division and Copyright Law Reform Task Force, as well as being the immediate past chair of the Copyright & Social Media committee. He also is an appointed member of the IPO Software Related Inventions Committee, and the INTA Internet Committee.

Each year from 2014 to 2016, 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. He also is a member of the board of directors of the York Theatre Company, which is dedicated to developing and producing new musicals.

Representative Matters

Copyright Litigation

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.

Fox News Network, LLC v. TVEyes Inc. (S.D.N.Y./2d Cir.): 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.

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. 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.

Solid Oak Sketches, LLC v. 2K Games, Inc. (S.D.N.Y.): Defending 2K Games and Take-Two Interactive Software Inc. in a lawsuit alleging that they committed copyright infringement by accurately depicting the tattoos of three NBA players in their NBA 2K16 video game, including winning a motion to dismiss Solid Oak’s statutory damages and attorney’s fees claims.

popham design, SARL v. F. Schumacher & Co. (D. Mass.): Lead counsel for defendants Schumacher and Mary McDonald, Inc. in a copyright infringement lawsuit concerning cement tile and textile designs.

IBM Corp. v. Teraproc Inc. (S.D.N.Y.): Representing IBM in a copyright infringement, trade secret misappropriation, and business tort lawsuit concerning the alleged copying by IBM’s former employees of proprietary source code for a load sharing facility used in high-performance computing.

Wolstenholme v. Hirst (S.D.N.Y.): Representing prominent artist Damien Hirst and Other Criteria (US), LLC in a copyright infringement and unfair competition lawsuit concerning pharmaceutical pill-inspired jewelry created by Mr. Hirst.

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.

Oracle Am., Inc. v. State of Oregon (9th Cir.): Represented Oracle in an appeal concerning Oregon’s unauthorized use of a health insurance exchange created by Oracle; the issues on appeal include the constitutionality of the Copyright Remedy Clarification Act, which abrogates state sovereign immunity for civil copyright infringement, and the effectiveness of a sovereign immunity waiver clause. A settlement was reached after Oracle filed its principal brief and received amicus support from several industry organizations and thought leaders.

A.M. Best Co. v. SNL Financial LC (D.N.J.): Represented A.M. Best in a copyright infringement and breach of contract action concerning SNL’s copying and distribution of A.M. Best’s ratings as part of its online database product.

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.

Patent Litigation

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.

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.

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.

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

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.

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

Converse, Inc. v. International Trade Commission (I.T.C./Fed. Cir.): Representing Converse in an administrative proceeding and subsequent appeal seeking to bar various defendants from importing into the United States footwear that infringes and dilutes Converse’s famous midsole trademark for its Chuck Taylor All Star shoes.

Express, LLC v. Forever 21, Inc. (9th Cir.): Negotiated dismissal of appeal and previously litigated district court case on behalf of Express.

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.

Trade Secrets Litigation

IBM Corp. v. Teraproc Inc. (S.D.N.Y.): Representing IBM in a copyright infringement, trade secret misappropriation, and business tort lawsuit concerning the alleged copying by IBM’s former employees of proprietary source code for a load sharing facility used in high-performance computing.

Syntel Sterling Best Shores Mauritius Ltd. v. TriZetto Grp., Inc. (S.D.N.Y.): Representing TriZetto and Cognizant Technology Solutions Corp. in a trade secret, unfair competition, and breach of contract litigation concerning healthcare software and related software consulting services.

Transactional, Counseling, and Non-Litigation Enforcement Matters

Representing F. Schumacher & Co. in copyright and trademark matters concerning the IP portfolio for its textile business and the unauthorized use of its textile designs.

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 copyright and trademark matters, including enforcement matters concerning the popular television series Modern Family.

Guided multinational pharmaceutical company through copyright and trademark issues concerning a world-wide social media campaign.

Representing global biopharmaceutical company in advertising disputes with competitor pharmaceutical company.

Counseling international entertainment creator, producer, and distributor on copyright and right of publicity issues involving its prime time, serial drama, and factual entertainment brands.

Advising innovative, luxury furniture and lighting boutique on copyright and trademark issues relates it to its IP portfolio and infringing use thereof.

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

Represented Zebra Technologies in trademark enforcement matters.

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.

Counseled worldwide health care and personal product producer on social media issues.

Memberships & Affiliations

American Bar Association, Intellectual Property Law Section:

Copyright Division, Chair, 2016–present; Vice Chair, 2015–2016
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 Related Inventions Committee, Member, 2016–present
Software & Business Methods Committee, Member, 2013–15

International Trademark Association:

Internet Committee, Member, 2016–present

Copyright Society of the USA:

New York Chapter Planning Committee, Member, 2015–present

Association of the Bar of the City of New York:

Information Technology Law Committee, Member, 2009–10

York Theatre Company:

Board of Directors, Member, 2016–present


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

2016 Copyright Developments, ABA Copyright Division

Copyright, in Successful Partnering Between Inside & Outside Counsel (Robert L. Haig ed., 2016)

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. 2012-15)

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

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


Resolving Technology and IP Disputes with Online Dispute Resolution Technology, 19th Annual Dispute Resolution Conference (Apr. 21, 2017)

Fair Use After Google Books, Advanced Copyright Law 2017: Current Issues (Mar. 16, 2017)

“You Stole My Idea!” “Who Are You?”: Recent Idea Submission Developments, 2017 Copyright, Trademark, Internet & Advertising Symposium (Jan. 31, 2017)

Fair Weather Friends: Nominative Fair Use and Comparative Advertising, 2017 Copyright, Trademark, Internet & Advertising Symposium (Jan. 24, 2017)

Building on the Shoulders of Giants or Stealing Their Gold: When Does Copying from Software Competitors Go Too Far?, 2017 Copyright, Trademark, Internet & Advertising Symposium (Jan. 18, 2017)

Life of a Social Media Campaign: Concerns and Best Practices, 2017 Copyright, Trademark, Internet & Advertising Symposium (Jan. 18, 2017)

Part of the Team: Trademark & Copyright Contributory Infringement, 2017 Copyright, Trademark, Internet & Advertising Symposium (Jan. 18, 2017)

The Copyrightability of Constructed Languages, Copyright Society of the USA (Dec. 16, 2016)

Viral Videos, 24th Annual Fordham Intellectual Property, Media & Entertainment Law Journal Symposium (Sept. 30, 2016)

How Many “Likes” Can You Get? Navigating Advertising Rules & Regulations in the World of Social Media, 2016 Advertising Law Seminar (Sept. 13, 2016)

Using Social Media and Internet-Based Content: What You Don’t Know Can Hurt You!, 23rd Annual Technology & Law Seminar (May 18, 2016)

Law & Innovation: Web Crawling and Scraping, ABA 31st Annual Intell. Prop. Law Conference (Apr. 7, 2016)

Copyright in Computer Programs: A Sea Change or Business As Usual?, 24th Annual Intellectual Property Law & Policy Conference (Apr. 1, 2016)

Copyright Office: Past, Present, Future, Advanced Copyright Law Annual Review 2016 (March 23, 2016)

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, "Rising Star," Each year 2014–16

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 Mentoring Committee, Member, 2013–present

Kirkland & Ellis New York Advisory Group on IT, Member, 2015–present

ALLSA Diversity Initiative, Liaison to Columbia Law School Outlaws, 2011–present; Liaison to Yale Law School OutLaws, 2014–15

Pro Bono Service Award, Recipient, Each year 2010–15

Kirkland & Ellis New York Associates Committee, Member, 2012–2016

Kirkland & Ellis Diversity Fellowship, Recipient, 2009

Press Coverage

Oracle Says Trial Judge 'Undermined' Google Copyright Case, Law360, Feb. 10, 2017

ABA-IPL Section Nominating Committee announces nominees for 2017-2018 ABA year, ABA-IPL eNews, December 2016

Episode 6A: Symposium – Viral Videos Panel, Fordham IPLJ Podcast, Oct. 25, 2016

IBM Sues Startup For Allegedly Stealing Software Code, Law360, Oct. 12, 2016

Fox News Doubles Down Against TVEyes in Fair Use Case, Law360, Sept. 2, 2016

Tattoo Co. Loses Some Damages Claims Over 'NBA 2K' Games, Law360, Aug. 2, 2016

Prof Urges 9th Circ. To Nix Ore. Immunity In Oracle IP Suit, Law360, July 19, 2016

TVEyes’ Service Is Unfair To Broadcasters, 2nd Circ. Told, Law360, June 28, 2016

CNN Says TVEyes More Like Meltwater Than Google Books, Law360, June 24, 2016

Media Giants Press 2nd Circ. To Shutter TVEyes, Law360, June 22, 2016

Fox News Says TVEyes Is 'Nothing Like Google Books,‘ Law360, June 17, 2016

'NBA 2K' Makers Say Tattoo Co. Not Entitled To Damages, Law360, May 31, 2016

'NBA 2K' Videogame Maker Fights Lawsuit Over Copyrighted Tattoos, The Hollywood Reporter, May 13, 2016

'NBA 2K' Makers Say In-Game Tattoos Predate IP Registration, Law360, Apr. 19, 2016

ITC Judge Spells Out 'Close' Converse Trademark Win, Law360, Dec. 21, 2015

Fox News, TVEyes Take Copyright Case to 2nd Circ., Law360, Dec. 1, 2015

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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