Joshua M. Dalton

In addition to serving as IP trial counsel, Josh provides strategic counseling to clients concerning intellectual property development, protection, and licensing. His engagements and cases have involved a diverse range of technologies, including see-thru signage, dialysis catheters and other medical devices, leakage current detector interrupters, acoustic insulation, explosion detection devices, removable on-demand tissue marking, hand-held computers, cutting tools, sports equipment, adhesive labels, large-scale voicemail systems, diesel exhaust systems, and computer software.

Josh’s IP clients have included the Boston Red Sox, Boston Scientific, ConAgra Foods, General Motors, Lifetime Entertainment Services, Wayfair.com, BOX Options Exchange, Nissan, Anheuser-Busch, Jenzabar, Inc., Xenith Helmets, FLEXcon Company, Le Vian Jewelry, and Gryphon Networks.

He speaks on a variety of intellectual property and related topics, including trademark protection, consumer surveys, copyright infringement, domain name disputes, copyright recapture, patent false marking, Do Not Call legislation, and other privacy issues. 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. Josh is recognized as a leading lawyer in IP litigation by Best Lawyers.

Before joining Morgan Lewis, Josh was a partner in the intellectual property practice at another international law firm, where he was co-chair of the intellectual property 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” in 2008 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
• 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
• Represented prominent university in enforcing its trademarks against unauthorized sales of branded products, resulting in cessation of infringing activity
• Obtained consent judgments and permanent injunctions on behalf of a specialty foods manufacturer against misappropriation of the company’s trade dress for its foods products
• Obtained a permanent injunction on behalf of specialty valve company against misappropriation of 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
• Retained to advise 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
• Handled a number of matters concerning domain name disputes or trademark misappropriation on the Internet
• Handled various matters before the Trademark Trial and Appeals Board, including overseeing a petition to cancel for an auto-parts manufacturer, a petition to cancel for a major sports team for a contest-related trademark and filing a petition to cancel for the East Coast Greenway Alliance, all resulting in successful outcomes

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 ADR
• Successfully defended a large national healthcare provider against a series of copyright claims based on alleged copying of architectural details for dialysis clinics; 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 variety of copyright-related issues and claims in both enforcement and response to claims
• Represented a publisher in the negotiation of a contract with an author
• Developed and maintained a copyright licensing program for an international poster company arising from widespread infringement of original artwork copyrighted by the client; In two instances, brought suit successfully preventing ongoing infringement of said works

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 a number of 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 patent-holder against a variety of major electronics companies over infringement of patent for handheld computers
• Represented a major medical device manufacturer in litigation involving inventorship disputes over dueling patent applications
• Represented patent-holder in infringement cases involving a power cutting device, diesel exhaust systems and large-scale voicemail systems
• Represented a law firm accused of malpractice arising out of complex patent litigation matter involving telecommunications technology

Trade Secrets/Non-disclosure/Non-compete

• 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
• Represented a former employee accused of violating a non-solicitation clause, resulting in voluntary dismissal of all claims
• Represented senior-level executives and employees in connection with departure from their current employers to start or join new ventures, both as pre-departure counsel and in the event of litigation

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 OEM 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 very favorable settlement after mediation
• Represented a software company in a dispute over licensing of dynamic link libraries and other development tools, resulting in favorable settlement without need for litigation
• 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.