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. 

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.

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.

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.

Individuals v. Epic Games, Inc. and Take-Two Interactive Software, Inc. (C.D. Cal.): Defended 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.

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.): Representing ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments, including winning an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction.

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, including winning personal jurisdiction motion to dismiss.

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.

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.

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.): Representing ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments, including winning an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction.

[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.

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

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. 

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.

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.

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.

Individuals v. Epic Games, Inc. and Take-Two Interactive Software, Inc. (C.D. Cal.): Defended 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.

Teradyne, Inc. v. Astronics Test Systems, Inc. (C.D. Cal.): Representing ATS and its parent company in a patent, copyright, and state law lawsuit concerning aerospace test instruments, including winning an initial motion to dismiss all of Teradyne’s claims as improperly pleaded and lacking personal jurisdiction.

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. 

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.