Joshua M. Dalton has extensive experience in intellectual property litigation as well as general commercial litigation where he represents a wide variety of clients in patent, copyright, trademark, trade dress, false advertising and trade secret matters. Josh has appeared in courts throughout the country as well as in the Trademark Office and Trademark Trial and Appeal Board. He has also handled numerous matters involving enforcement of non-competition, non-solicitation and non-disclosure agreements for both employers and employees.
Josh’s practice also involves providing strategic counseling to clients concerning intellectual property development, protection and licensing. In addition, he has provided counseling in a variety of more general business matters, including resolving relationships with disgruntled high-level employees, internal investigation and review of business transactions, and negotiating possible joint venture opportunities. Josh’s engagements and cases have involved a diverse range of technologies, including dialysis catheters and other medical devices, leakage current detector intercepters, 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, Lifetime Entertainment Services, Nissan, Anheuser-Busch, FLEXcon Company, Le Vian Jewelry and Gryphon Networks.
Josh has spoken on a variety of intellectual property and related topics, including trademark protection, false patent marking, copyright infringement, domain name disputes, 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.
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)
- Obtained consent judgment and permanent injunction on behalf of Lifetime Entertainment Services against use of the LIFETIME trademark by book publisher
- 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 permanent injunction for a trademark holder for apparel against infringement by a former business partner of the markholder
- 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
- 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
- Retained to advise a major jewelry designer on its trademark protection and enforcement programs
- Represented an auto manufacturer in several trademark matters, including at the prosecution and opposition level
- 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
- Acted as counsel to a major intellectual property escrow company in successfully thwarting trademark infringement, cybersquatting and Internet fraud
- 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 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, we brought suit successfully prevent 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
- Representing a number of clients against false patent marking claims, including eye care products company and exercise equipment company
- Representing provider of Do-Not-Call compliance products in patent infringement suit against competitor
- 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
- Served as lead counsel in defending 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
- Served as lead counsel to 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
- Served as counsel for a software company in a dispute over licensing of dynamic link libraries and other development tools, resulting in favorable settlement without need for litigation
- Served as counsel for 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.
- Co-author, “1st Circ. Ruling Clarifies Limits Of ‘Actual Confusion’,” Law360 (September 2008)
- Co-author, “Concern for Causation: Calculating Fair Damages for Indirect Copyright Infringement,” IP Today (June 2008)
- Co-author, “New Accounting Rule Could Significantly Change IP Valuations,” New England In-House (October 1, 2007)
- Co-author, “Supreme Court Decisions Affecting IP Valuation,” Executive Counsel, Vol. 5 (March/April 2008)
- “Seven Practical Ways to Help Protect Your Company's Intellectual Property,” Bloomberg Corporate Law Journal (January 2007)
- “Demonstrating Third-Party Trademark Use Without Breaking the Bank,” Bloomberg Corporate Law Journal (January 2007)
- “Funny When You Think About It: Surveying the impact of double entendres in trademark protectibility,” Journal of the Patent and Trademark Office Society, Vol. 88 (July 2006)
- “Equitable Defenses to the Invocation of the Copyright Act's Statute of Frauds Provision,” Journal of the Copyright Society of USA, Vol. 46 (Summer 1999)
- “At the Crossroads of Richmond and Gault: Addressing Media Access to Juvenile Delinquency Proceedings through a Functional Analysis,” Seton Hall Law Review, Vol. 28 (1998)
- Using Intellectual Property Law to Protect and Grow your Business, Build Boston convention and tradeshow, Boston, Mass. (2009)
- How to Protect Your Design and Architectural Intellectual Property, Boston Society of Architects, Boston, Mass. (2009)
- Winning the Copyright Case on Summary Judgment, Boston Bar Association’s Intellectual Property Litigation Committee, Boston, Mass. (2009)
- Lessons Learned While Litigating Trademark Cases, Boston Bar Association’s Intellectual Property Litigation Committee, Boston, Mass. (2008)
- Addressing Anti-SPAM and Do Not Call Legislation, Financial Communications Forum (2003)
- Trademarks, the Internet and Personal Jurisdiction, Massachusetts Continuing Legal Education (2001)
- American Bar Association
- Massachusetts Bar Association
- Boston Bar Association
- American Intellectual Property Law Association
- Boston Patent Law Association
- Admitted to practice in Massachusetts
- U.S. District Court, District of Massachusetts
- U.S. Court of Appeals, First Circuit
- U.S. Court of Appeals, Federal Circuit
- Harvard Law School, Juris Doctor, magna cum laude (1997)
- University of Utah, Bachelor of Science, Philosophy and Political Science, summa cum laude (1993)