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 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.

Oracle Am., Inc. v. Google Inc. (Fed. Cir.): Obtained reversal in Oracle’s appeal from the remand fair use trial mentioned above, wherein the Federal Circuit held 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.

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.

Take-Two Interactive Software, Inc. v. Zipperer (S.D.N.Y.): Obtained preliminary injunction and defeated motion to dismiss for Take-Two in a copyright, breach of contract, and tortious interference lawsuit involving computer programs that alter Take-Two’s Grand Theft Auto V video game, allowing users to cheat and perform unauthorized actions.

Take-Two Interactive Software, Inc. v. Cameron (S.D.N.Y.): Secured preliminary and permanent injunctions against defendants in litigation involving a different computer program that also alters Take-Two’s Grand Theft Auto V video game to permit user cheating.

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.

Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC (U.S. Supreme Court): Counsel for American Bar Association as amicus curiae, advocating for an interpretation of the Copyright Act that allows copyright suits to be filed once a complete set of registration materials are submitted to the Copyright Office.

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 USA, Inc. v. Rimini St., Inc. (U.S. Supreme Court): Representing Oracle in Rimini’s appeal to the Supreme Court regarding the availability of non-taxable costs in copyright cases.

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.

Psychic Readers Network, Inc. v. Take-Two Interactive Software, Inc. (S.D. Fla.): Defending Take-Two in a copyright infringement lawsuit that asserts that Take-Two’s Grand Theft Auto: Vice City video game infringes PRN’s infomercials and merchandise portraying Miss Cleo.

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.

de Becdelievre v. Anastasia Musical, LLC (S.D.N.Y.): Defending the producer of the Broadway musical Anastasia and Tony Award winning playwright Terrence McNally against a copyright claim brought by the heir to the estate of Marcelle Maurette, who had written a dissimilar straight play concerning the same historical subject matter.

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 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.

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.

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.

Take-Two Interactive Software, Inc. v. Pinkerton Consulting & Investigations, Inc. (S.D.N.Y.): Representing Take-Two in a declaratory judgment lawsuit asserting that references to the historic Pinkerton Detective Agency in Red Dead Redemption 2, which is set in the Nineteenth Century Wild West, are protected by the First Amendment and are not trademark infringement.

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.

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.