Joshua L. Simmons

For a list of matters by industry (including non-litigation enforcement, prosecution, and counseling matters), click here.

Copyright Litigation

Fox News Network, LLC v. TVEyes Inc. (S.D.N.Y./2d Cir./U.S. Supreme Court): Won summary judgment, obtained permanent injunction, and prevailed on appeal for Fox News in a copyright infringement action against a media monitoring service. The Second Circuit held that permitting users to view video clips of telecasts was not fair use and constituted volitional conduct leading to direct infringement liability.

Oracle Am., Inc. v. Google Inc. (Fed. Cir./U.S. Supreme Court): Obtained reversals in Oracle’s two highly publicized appeals of district court orders concerning the copyrightability and fair use of software. The first appellate decision determined that the elements of Oracle’s Java platform admittedly copied by Google to create its Android operating system were copyrightable. The second determined that Google’s copying was not fair use as a matter of law.

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.

Take-Two Interactive Software, Inc. v. Mod Menu Creators (S.D.N.Y.): Obtained preliminary and permanent injunctions, defeated motions to dismiss, and secured maximum statutory damages, and attorney’s fees in series of copyright, breach of contract, and tortious interference lawsuits involving computer programs that alter Take-Two’s Grand Theft Auto V video game, allowing users to cheat and perform unauthorized actions.

IBM Corp. v. Teraproc Inc. (S.D.N.Y.): Secured permanent injunction for IBM in a copyright, trade secret, and business tort lawsuit concerning the copying by IBM’s former employees of proprietary source code for a high-performance computing program into an open sourced project without IBM’s authorization.

Bitetto v. Rometty (N.D.N.Y.): Obtained dismissal for IBM’s CEO in a copyright and unfair competition action alleging infringement of a book describing a brain-inspired microchip.

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

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.): Won summary judgment for the AP 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.

Individuals v. Epic Games, Inc. and Take-Two Interactive Software, Inc. (C.D. Cal./D. Md./E.D. Pa.): Defending Epic Games and Take-Two in lawsuits asserting that their video games Fortnite and NBA 2K, respectively, violate the plaintiffs’ copyright, publicity, trademark, and unfair competition rights to dance steps. After Epic and Take-Two moved to dismiss the eight initial lawsuits, each of the lawsuits was voluntarily dismissed.

Hayden v. 2K Games, Inc. (N.D. Ohio): Defending 2K Games and Take-Two Interactive Software Inc. in a lawsuit alleging that they committed copyright infringement by accurately depicting tattoos inked by the plaintiff on certain NBA players in their NBA 2K video game, including winning a motion to dismiss the plaintiff’s claims for unjust enrichment and for a declaratory judgment that Take-Two should have credited the plaintiff for creating the tattoos.

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 2K video game, including winning a motion to dismiss Solid Oak’s statutory damages and attorney’s fees claims and defeating Solid Oak’s motion to dismiss Take-Two’s counterclaims seeking declaratory judgments of de minimis and fair use, as well as fraud on the Copyright Office.

Oracle Am., Inc. v. Hewlett Packard Enters. Co. (9th Cir.): Representing Oracle in its appeal of an order concerning the unauthorized use of software patches for its enterprise operating system.

Chronicle Books, LLC v. Audible, Inc. (S.D.N.Y.): Representing seven members of the Association of American Publishers in a copyright infringement lawsuit seeking to enjoin Audible Captions, a service that provides audiobook consumers the entire, machine-generated text of literary works. 

Motorola Solutions, Inc. v. Hytera Commc’ns Corp. (N.D. Ill.): Representing Motorola in a trade secret misappropriation and copyright infringement lawsuit involving Motorola’s digital radio systems technology and software.

Alexander v. Take-Two Interactive Software, Inc. (S.D. Ill.): Defending Take-Two, along with other defendants, in a lawsuit alleging that they committed copyright infringement by accurately depicting tattoos inked by the plaintiff on WWE wrestler Randy Orton in their WWE 2K video game.

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

Oracle USA, Inc. v. Rimini St., Inc. (U.S. Supreme Court): Represented Oracle regarding the meaning of the term “full costs” in the Copyright Act.

Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC (U.S. Supreme Court): Counsel for American Bar Association as amicus curiae concerning the meaning of the term “registration” in the Copyright Act.

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.

de Becdelievre v. Anastasia Musical, LLC (S.D.N.Y.): Defended the Broadway musical Anastasia and Tony-winning playwright Terrence McNally in copyright lawsuit concerning a dissimilar play about the same historical subject matter.

Psychic Readers Network, Inc. v. Take-Two Interactive Software, Inc. (S.D. Fla.): Defended Take-Two in a copyright lawsuit asserting that Grand Theft Auto: Vice City video game infringed PRN’s infomercials for psychic services.

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

Advice Interactive Grp., LLC v. Web.com Grp., Inc. (M.D. Fla.): Defended Web.com in a copyright, trade secret, unfair competition, and breach of contract lawsuit concerning web-based analytics software.

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

A.M. Best Co. v. SNL Financial LLC (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.

Cengage Learning, Inc. Bankruptcy (Bankr. E.D.N.Y.): Advised Cengage Learning on copyright issues related to its Chapter 11 bankruptcy.

Patent Litigation

Epic IP LLC v. Sharp Electronics Corp. (S.D.N.Y.): Defended Sharp in a patent infringement litigation concerning web chat technology by moving to dismiss on the basis that Epic’s patent was directed to patent-ineligible subject matter. The patent was invalidated, and the case was dismissed.

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.

[24]7.ai, Inc. v. LivePerson, Inc. (N.D. Cal.): Representing LivePerson in a patent infringement lawsuit brought by 24/7, in which six patents were held invalid because they were directed to unpatentable subject matter.

Cisco Systems, Inc. v. Arista Networks, Inc. (N.D. Cal./I.T.C.): Represented 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 and Unfair Competition Litigation

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

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.

Humu, Inc. v. Hulu, LLC (N.D. Cal.): Defended Hulu in declaratory judgment trademark suit concerning whether the HUMU mark infringed and diluted the HULU trademark. The litigation was voluntarily dismissed.

Hage v. Shenzhen Xiaohuangfeng Trading Co. (T.T.A.B.): Achieved a sustained opposition and refusal of Shenzhen’s trademark application.

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

Individuals v. Epic Games, Inc. and Take-Two Interactive Software, Inc. (C.D. Cal./D. Md./E.D. Pa.): Defending Epic Games and Take-Two in lawsuits asserting that their video games Fortnite and NBA 2K, respectively, violate the plaintiffs’ copyright, publicity, trademark, and unfair competition rights to dance steps. After Epic and Take-Two moved to dismiss the eight initial lawsuits, each of the lawsuits was voluntarily dismissed.

Graham v. Take-Two Interactive Software, Inc. (S.D.N.Y.): Defending Take-Two in a trademark lawsuit concerning use of the RWTW acronym on a video game cover depicting LeBron James, with whom the acronym is associated.

Converse, Inc. v. Int’l Trade Commission (I.T.C./Fed. Cir.): Represented 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 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.

Take-Two Interactive Software, Inc. v. Pinkerton Consulting & Investigations Inc. (S.D.N.Y.): Represented Take-Two and Rockstar Games, Inc. in a trademark case concerning whether their Red Dead Redemption II video game, set in the Wild West, was permitted by the First Amendment to make references to the historical Pinkerton detective agency and its agents’ activities in the 1800s.

Drybar Holdings LLC v. PetSmar Inc. (C.D. Cal.): Represented Drybar in a trademark and trade dress infringement lawsuit concerning an unauthorized pet-oriented brand extension of Drybar’s product line.

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 for its satellite service.

Trade Secrets Litigation

IBM Corp. v. Teraproc Inc. (S.D.N.Y.): Secured permanent injunction for IBM in a copyright, trade secret, and business tort lawsuit concerning the copying by IBM’s former employees of proprietary source code for a high-performance computing program into an open sourced project without IBM’s authorization.

LivePerson, Inc. v. [24]7.ai, Inc. (S.D.N.Y./N.D. Cal.): Representing LivePerson in a lawsuit concerning 24[7]’s misappropriation of LivePerson’s chat engagement rule, variable, and data trade secrets, including defeating [24]7’s summary judgment motion.

Motorola Solutions, Inc. v. Hytera Commc’ns Corp. (N.D. Ill.): Representing Motorola in a trade secret misappropriation and copyright infringement lawsuit involving Motorola’s digital radio systems technology and software.

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

Advice Interactive Grp., LLC v. Web.com Grp., Inc. (M.D. Fla.): Defended Web.com in a copyright, trade secret, unfair competition, and breach of contract lawsuit concerning web-based analytics software.