Joshua M. Dalton

In both defense and enforcement cases, Josh approaches clients’ IP disputes strategically and with a goal of resolving them expeditiously. His IP clients have included the Boston Red Sox, Boston Scientific, Wayfair, ConAgra Foods, General Motors, SimpliSafe, WHOOP Inc., Office Depot, PUMA North America, Nissan, Xenith Helmets, BOX Options Exchange, Le Vian Jewelry, and FLEXcon Company.

Josh enjoys practicing as well as speaking at various events, and regularly shares his insights on a variety of intellectual property and related topics, including trademark protection, consumer surveys, copyright infringement, false advertising, product design protection, domain name disputes, artificial intelligence, copyright recapture, patent false marking, and Do Not Call legislation. He is also a National Institute of Trial Advocacy-certified trial skills trainer and has served as faculty in a number of trial advocacy workshops.

Before joining Morgan Lewis, Josh was a partner in the IP practice at another international law firm, where he was co-chair of the IP group and co-managing partner of the Boston office.

Trademark/Trade Dress/False Advertising

• Successfully argued First Circuit appeal of injunction against client’s use of its name, obtaining reversal of injunction and holding that key term in plaintiff’s trademark was generic; the case was deemed one of the “Most Important Decisions” of the year by Massachusetts Lawyers Weekly
• Handled a jury trial in federal court resulting in successful defense of the Boston Red Sox’s trademark rights in the nickname “Green Monster” (Fenway Park’s left-field wall)
• Represented General Motors against claim of trademark infringement concerning Cadillac CUE user interfaces; obtained a finding of no likelihood of confusion on summary judgment, resulting in judgment for GM on all counts
• Obtained preliminary injunction on behalf of Tavistock’s Napa Valley Grille against infringement by The Napa Grill, requiring an immediate name change by the defendant
• First-chaired two-week arbitration representing respondent regarding Lanham Act claims in a dispute involving pet care products, resulting in an award that was a fraction of claimant’s demand and in favor of respondent on all remaining counts
• Obtained consent judgment and permanent injunction on behalf of Lifetime Entertainment Services against use of the LIFETIME trademark by book publisher
• Represented bank in response to trademark infringement claim over name; obtained mutual existence agreement avoiding protracted litigation
• In false advertising claim, on behalf of eye care products company, obtained curative letter to customers and prospects acknowledging that certain statements about client’s products were wrong
• Obtained a preliminary injunction for a manufacturer of cutting-edge contraband detection devices against a competitor’s false advertising claims that the client’s products were prone to malfunction
• Obtained consent judgments and permanent injunctions on behalf of a specialty foods manufacturer against misappropriation of the company’s trade dress for its food products
• Obtained a permanent injunction on behalf of a specialty valve company against misappropriation of the company’s trademark and logo
• Obtained a permanent injunction on behalf of a major online and catalog retailer against use of its name by an unauthorized retailer
• Serves as a long-time advisor for a major jewelry designer on its trademark protection and enforcement programs
• Secured prompt cessation of use and destruction of unauthorized products bearing infringing trademark on behalf of an auto manufacturer
• Obtained a favorable settlement in defense of a suit against a major retailer brought by a brandholder over alleged trademark infringement based on the sale of seconds and closeouts with partially removed or defaced labels
• Served as counsel in a case involving violation of the Lanham Act arising from improper claims that imported products were “Made in U.S.A.,” resulting in the defendant reversing misdescriptive practices

Copyright

• Tried a matter for a major international news organization in which the judge found that the client’s copyrights had been infringed by a company selling unauthorized copies of its news stories
• Brought a copyright infringement lawsuit on behalf of a computer programmer against a major department store conglomerate for copyright infringement of custom software code, resulting in a favorable settlement through use of alternative dispute resolution
• Defended a large national healthcare provider against a series of copyright claims based on alleged copying of architectural details for dialysis clinics; the cases involved thwarting one attempt to obtain a temporary restraining order and three attempts to obtain preliminary injunctions preventing our client from opening and operating newly constructed facilities; cases settled on favorable terms after obtaining partial summary judgment severely limiting plaintiff’s damages
• Represented major medical device company against copyright infringement claims involving motion sensor software; obtained favorable settlement
• Represented publisher in copyright claims over unauthorized use of content by former customer, resulting in cessation of use of infringing materials and payment of all attorneys’ fees
• Represent jewelry manufacturer in a variety of copyright-related issues and claims in both enforcement and response to claims

Trade Secrets/Non-Disclosure/Non-Compete

• First-chaired multi-week arbitration representing respondent against allegations of trade secret misappropriation and breach of contract involving logistics hardware and software
• Represented a bank against allegations of trade secret misappropriation and tortious interference with a new employee’s former employer. Defeated all aspects of preliminary injunction involving our client, and helped navigate the matter to settlement shortly thereafter
• Represented a merchant services vendor against allegations of tortious interference with contracts between a sales group and their former employer; avoided extensive motion practice by convincing plaintiff to drop its motion for preliminary injunction and then negotiated settlement without the cost of full-blown litigation
• Obtained a temporary restraining order on behalf of an employer, empowering civil sheriffs to impound an employee’s home computers for expert review; the case resulted in consent judgment and permanent injunction against the employee
• Obtained a temporary restraining order and preliminary injunction against a former employee of a software company, preventing the employee from working for a direct competitor; the case ultimately favorably settled with the employee agreeing inter alia not to be employed at the competitor and to a permanent injunction against use of the client’s trade secrets
• Obtained a temporary restraining order against a former employee of an insurance company requiring cessation of all solicitation of former clients; the matter was quickly resolved with the former employee agreeing not to solicit former clients
• Obtained a temporary restraining order and preliminary injunction for a software company against a former employee’s misappropriation of source code and other proprietary information
• Represented an armored vehicle manufacturer in case of misappropriation of trade secrets and violations of the Computer Fraud and Abuse Act against major competitor

Patents

• Obtained summary judgment of non-infringement on behalf of major food processor on patent concerning the preparation of frozen fish, which was affirmed by the Federal Circuit
• Represent numerous clients including major online retailer in defending against multiple Non-Practicing Entity (i.e., “trolls”) patent cases
• Represented national options exchange in bringing patent infringement claims concerning patent on secondary auctions
• Represented numerous clients against false patent marking claims, including eye care products company and exercise equipment company
• Represented provider of Do-Not-Call compliance products in patent infringement suit against competitor
• Representing manufacturer of acoustic insulation against patent infringement claims
• Obtained dismissal of patent-related claims improperly brought in state court, which was affirmed by the appeals court
• Represented manufacturer of electronic safety devices against claims of infringement from two different competitors
• Represented major brewing company in patent infringement suit over manufacture of adhesive labels
• Represented plaintiff in a patent infringement case involving indicator fuses
• Represented a defendant in multiple suits against claims of infringement of patents concerning sporting and protective equipment
• Represented a manufacturer of explosives-detection devices against a claim of patent infringement over core technology
• Represented a major medical device manufacturer in litigation involving inventorship disputes over dueling patent applications
• Represented a law firm accused of malpractice arising out of complex patent litigation matter involving telecommunications technology

Intellectual Property Licensing Disputes and High-Technology Litigation

• Represented a custom software company against a claim of breach of contract and licensing agreement brought by the licensee of software. He also first-chaired mediation of the dispute, resulting in voluntary dismissal of the lawsuit and payment of additional funds to our client by the plaintiff.
• Represented an Internet security solutions company in obtaining a favorable result in arbitration against an original equipment manufacturer in a dispute over supply of electronic components for an internet security product
• Represented an electronic component distribution company in a lawsuit brought against a former customer for payments due for custom electronic components purchased by the client, resulting in a very favorable settlement after mediation
• Represented an indexing software company against a claim brought by a software company alleging violation of license for archival software; the matter favorably settled prior to trial