Joshua M. Dalton

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, resulting in a final order awarding zero dollars against complainant’s nine figure claim
• 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