Joshua L. Simmons

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

Copyright Litigation

Oracle Am., Inc. v. Hewlett Packard Enters. Co. (9th Cir.): Obtained reversal for Oracle in appeal of summary judgment order concerning the unauthorized use of software patches for its enterprise operating system, holding that Oracle presented sufficient evidence of copying, intentional interference, and unfair competition to go to the jury. At the remand jury trial, Oracle was awarded $30 million in damages.

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.

Alexander v. Murdoch (S.D.N.Y./2d Cir.): Obtained dismissal and won appeal for Fox Entertainment Group, along with other defendants, holding that Fox’s Modern Family television series was not substantially similar to the plaintiff’s treatment and proposed pilot script, his idea misappropriation claim was preempted by the Copyright Act, and his defamation claim failed as it was based on statements that did not identify him.

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 concerning the copyrightability of software. The appellate decision determined that the elements of Oracle’s Java platform copied by Google to create its Android operating system were copyrightable.

Hanagami v. Epic Games, Inc. (C.D. Cal.): Won motion to dismiss for Epic Games in the first case in U.S. legal history to consider the copyrightability of dance steps. In eight prior lawsuits, actors, rappers, and social media personalities asserted that Epic Games’ and Take-Two Interactive Software, Inc.’s Fortnite and NBA 2K video games, respectively, violated the plaintiffs’ copyright, publicity, trademark, and unfair competition rights to dance steps. After Epic and Take-Two moved to dismiss, each of the lawsuits was voluntarily dismissed. Then, Hanagami filed a lawsuit against Epic asserting that it copied steps set to four counts of music from a longer five-minute piece. The court dismissed the case, holding that the steps were not protectable in isolation and the other elements of the works were dissimilar, as well as that the unfair competition claim was preempted by the Copyright Act.

Syntel Sterling Best Shores Mauritius Ltd. v. TriZetto Grp., Inc. (S.D.N.Y.): Won $854 million trade secret and copyright jury verdict and obtained permanent injunction for TriZetto and Cognizant Technology Solutions Corp. in a litigation concerning healthcare software and related software consulting services.

Solid Oak Sketches, LLC v. 2K Games, Inc. (S.D.N.Y.): Won summary judgment on the bases of de minimis use, fair use, and license for 2K Games and Take-Two Interactive Software Inc. in a lawsuit alleging that they committed copyright infringement by accurately depicting NBA players, along with their tattoos, in their NBA 2K video game. Previously won a motion to dismiss statutory damages and attorney’s fees claims and defeated motion to dismiss Take-Two’s counterclaims, including fraud on the Copyright Office.

Alexander v. Take-Two Interactive Software, Inc. (S.D. Ill.): Successfully defended Take-Two and other defendants in a lawsuit alleging that their WWE 2K video game infringed the plaintiff’s copyrights in tattoos she inked on WWE wrestler Randy Orton, including winning motions to dismiss concerning personal jurisdiction and the plaintiff’s lack of a copyright registration. At trial, the plaintiff requested $27.3 million, but the jury awarded only $3,750 in actual damages and none of the defendants’ profits.

Motorola Solutions, Inc. v. Hytera Commc’ns Corp. (N.D. Ill.): Won $764 million trade secret misappropriation and copyright infringement jury trial involving Motorola’s digital radio systems technology and software, in which the jury rejected Hytera’s statute of limitations defense and awarded Motorola its full requested compensatory and punitive damages.

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.

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.

Chronicle Books, LLC v. Audible, Inc. (S.D.N.Y.): Brought copyright lawsuit on behalf of seven members of the Association of American Publishers seeking to enjoin a service that provided consumers the entire, machine-generated text of audiobooks. The parties resolved the litigation with a permanent injunction being issued and Audible agreeing that it will obtain permission from AAP’s members before moving forward with the service for their works.

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.

AMO Dev., LLC et al v. Alcon LenSx, Inc. (D. Del.): Defending Alcon in a patent and copyright lawsuit concerning laser eye surgery technology, including defeating a preliminary injunction motion that sought to enjoin sales of Alcon’s LenSx systems.

Teradyne, Inc. v. Astronics Test Systems, Inc. (C.D. Cal./P.T.A.B.): Representing ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments. Won an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction; and a second motion to dismiss Teradyne’s indirect and willful patent infringement, unfair competition, and prospective economic advantage claims, as well as a motion to dismiss ATS’s parent company due to a lack of personal jurisdiction. Then, invalidated Teradyne’s automatic test equipment patent in an inter partes review proceeding.

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.

Thomson Reuters Enterprise Centre GmbH et al v. ROSS Intelligence Inc. (D. Del.): Representing Thomson Reuters and West Publishing in a copyright and tortious interference lawsuit concerning copying of Westlaw’s content to create a competing product, including defeating ROSS’s motion to dismiss.

SAS Inst., Inc. v. World Programming Ltd. (Fed. Cir.): Representing SAS in its appeal of a district court order dismissing its copyright claim against WPL for creating a computer program that cloned SAS’s input formats and output designs. 

Patent Litigation

Teradyne, Inc. v. Astronics Test Systems, Inc. (C.D. Cal./P.T.A.B.): Representing ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments. Won an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction; and a second motion to dismiss Teradyne’s indirect and willful patent infringement, unfair competition, and prospective economic advantage claims, as well as a motion to dismiss ATS’s parent company due to a lack of personal jurisdiction. Then, invalidated Teradyne’s automatic test equipment patent in an inter partes review proceeding.

IngenioShare, LLC v. Epic Games, Inc. (W.D. Tex.): Won motion to dismiss in a multi-patent litigation against Epic Games concerning its messaging and communication technology. The court held that the Western District of Texas was an improper venue for the parties’ dispute.

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.

AMO Dev., LLC et al v. Alcon LenSx, Inc. (D. Del.): Defending Alcon in a patent and copyright lawsuit concerning laser eye surgery technology, including defeating a preliminary injunction motion that sought to enjoin sales of Alcon’s LenSx systems.

[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.

Digi Portal LLC v. GoodRx, Inc. (D. Del.): Resolved five patent litigation involving website technology patents.

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

Oracle Am., Inc. v. Hewlett Packard Enters. Co. (9th Cir.): Obtained reversal for Oracle in appeal of summary judgment order concerning the unauthorized use of software patches for its enterprise operating system, holding that Oracle presented sufficient evidence of copying, intentional interference, and unfair competition to go to the jury. At the remand jury trial, Oracle was awarded $30 million in damages.

Hanagami v. Epic Games, Inc. (C.D. Cal.): Won motion to dismiss for Epic Games in the first case in U.S. legal history to consider the copyrightability of dance steps. In eight prior lawsuits, actors, rappers, and social media personalities asserted that Epic Games’ and Take-Two Interactive Software, Inc.’s Fortnite and NBA 2K video games, respectively, violated the plaintiffs’ copyright, publicity, trademark, and unfair competition rights to dance steps. After Epic and Take-Two moved to dismiss, each of the lawsuits was voluntarily dismissed. Then, Hanagami filed a lawsuit against Epic asserting that it copied steps set to four counts of music from a longer five-minute piece. The court dismissed the case, holding that the steps were not protectable in isolation and the other elements of the works were dissimilar, as well as that the unfair competition claim was preempted by the Copyright Act.

LivePerson, Inc. v. [24]7.ai, Inc. (S.D.N.Y./N.D. Cal.): Won $30 million trade secret and unfair competition jury verdict for LivePerson in a lawsuit concerning 24[7]’s misappropriation of LivePerson’s chat engagement rule and data trade secrets. After trial, the court awarded more than $4 million in additional pre- and post-judgment interest, as well as rejecting each of [24]7 arguments seeking to overturn the jury verdict. 

Brantley v. Epic Games, Inc. (D. Md.): Obtained dismissal of lawsuit asserting that Epic Games violated the plaintiffs’ rights in a dance step as their state law claims were preempted by the Copyright Act, their Lanham Act claims were barred by the Dastar doctrine, and their trademark and dilution claims failed to plead the existence of a trademark.

Pellegrino v. Epic Games, Inc. (E.D. Pa.): Represented Epic Games against a claim that Fortnite’s “Phone It In” emote violated Pellegrino’s rights in a dance movement, including winning a motion to dismiss that Pellegrino’s right of publicity claims were barred by the First Amendment, his trademark claims were preempted by the Copyright Act, and he failed to satisfy the elements of his unfair competition and unjust enrichment claims.

Graham v. Take-Two Interactive Software, Inc. (S.D.N.Y.): Obtained dismissal for 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.

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.

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.

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. 

Teradyne, Inc. v. Astronics Test Systems, Inc. (C.D. Cal./P.T.A.B.): Representing ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments. Won an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction; and a second motion to dismiss Teradyne’s indirect and willful patent infringement, unfair competition, and prospective economic advantage claims, as well as a motion to dismiss ATS’s parent company due to a lack of personal jurisdiction. Then, invalidated Teradyne’s automatic test equipment patent in an inter partes review proceeding.

Yahoo Inc. v. Maesa LLC (T.T.A.B.): Defending Maesa against Yahoo’s opposition to its registration of a mark for one of its beauty brands. 

Global Hemp, Inc. v. Osiris Ventures, LLC (T.T.A.B.): Defending Osiris against Global Hemp’s opposition to its registration of a mark for its hemp consulting services.

Trade Secrets Litigation

LivePerson, Inc. v. [24]7.ai, Inc. (S.D.N.Y./N.D. Cal.): Won $30 million trade secret and unfair competition jury verdict for LivePerson in a lawsuit concerning 24[7]’s misappropriation of LivePerson’s chat engagement rule and data trade secrets. After trial, the court awarded more than $4 million in additional pre- and post-judgment interest, as well as rejecting each of [24]7 arguments seeking to overturn the jury verdict.

Syntel Sterling Best Shores Mauritius Ltd. v. TriZetto Grp., Inc. (S.D.N.Y.): Won $854 million trade secret and copyright jury verdict and obtained permanent injunction for TriZetto and Cognizant Technology Solutions Corp. in a litigation concerning healthcare software and related software consulting services.

Motorola Solutions, Inc. v. Hytera Commc’ns Corp. (N.D. Ill.): Won $764 million trade secret misappropriation and copyright infringement jury trial involving Motorola’s digital radio systems technology and software, in which the jury rejected Hytera’s statute of limitations defense and awarded Motorola its full requested compensatory and punitive damages.

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.

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.

Josh’s pro bono includes representing asylum seekers before the Department of Homeland Security, as well as IP-related matters for the American Theatre Wing, Comic Book Legal Defense Fund, Fashion Law Institute, and various leading LGTBQ nonprofits.