Joseph Kish devotes a significant portion of his practice to the defense of business litigation, complex commercial litigation and technology and intellectual property law matters. He is skilled in the defense of employment matters, particularly employment mobility actions and state and federal employment discrimination actions. He serves as co-chair of the firm’s Technology & Cyber Risk practice group, chair of the firm’s Pro Bono & Public Service Committee and member of the Hiring Committee and the Associate Development Committee.

He also represents clients in matters involving class action, as well as in defense of data breach, privacy, fraud, defamation, professional negligence and breach of contract claims. He also has experience in professional liability, focusing on lawyer liability, insurance coverage and bad faith.

Joe maintains a national trial practice. He represents clients at both the trial and appellate levels in federal and state courts and in jurisdictions nationally. While licensed to practice in Illinois and California, he is admitted to the bars of district and circuit courts across the country.

As a result of his deep experience, Joe is frequently tapped to present on matters of law central to his trial work. In his role on faculty for the National Institute of Trial Advocacy, he teaches trial advocacy, expert witness and deposition skills throughout the United States.

He regularly publishes on technology, employment and intellectual property matters for a variety of sources including the DRI, the Illinois Institute for Continuing Legal Education and various bar associations. He is the general editor of the Illinois Institute for Legal Education handbook Business and Commercial Litigation, 2018 Edition, and author for Expert Witnesses. He also has authored libel and slander chapters for the attorney practice book California Causes of Action.

Joe received his J.D. from DePaul University College of Law. There, he was president of the Moot Court Society and a member of the DePaul Law Review. Joe was a judicial extern for the Honorable William T. Hart, district judge, Northern District of Illinois.

Before that, he attended the University of Michigan, Ann Arbor, where he received a B.G.S. in Economics and Political Science. As a student at the University of Michigan, Joe was associate editor of the Michigan Journal of Political Science.

Honors

  • Excellence in Pro Bono Service Award
  • Illinois Super Lawyers, 2013 – present
  • Wiley Manuel Public Service Award Recipient
  • National Registry of Who’s Who, Life Member

Professional & Civic Involvement

  • Chicago Bar Association
    • Former chair, Commercial Litigation Committee
  • DRI
    • Former chair, Intellectual Property Copyright SLG
    • Vice-chair, Trademark SLG
    • IP Seminar Planning Committee
    • Steering Committee
  • Intellectual Property Law Association of Chicago
  • Professional Liability Underwriting Society

 

 

 

 

Practice Highlights

Representative Matters

INTELLECTUAL PROPERTY LITIGATION

  • Defended a trade secret case in Indiana State Court and achieved an extremely favorable settlement on the first day of trial.
  • Served as co-counsel with a California firm defending a trade secret misappropriation case on behalf of a technology staffing agency. Achieved a win after evidentiary hearings.
  • Defended a trade secret and restrictive covenant case in Lake County, Illinois, on behalf of a technology personnel staffing company, resulting in recoupments of all fees owed to the client and partial attorneys’ fees.
  • Defended a trademark, copyright, trade dress and Lanham Act case against a foreign manufacturer and domestic distributor, resulting in a very favorable settlement before trial.
  • Defended federal trademark, copyright infringement, Lanham Act and counterfeiting claims against a computer manufacturer brought by a major software company seeking multimillion-dollar damages. The case was successfully mediated after aggressive discovery and investigation revealed viable defenses to each claim.
  • Defended a modeling agency against claims of copyright infringement, breach of privacy rights and rights of publicity. Obtained early successful settlement on behalf of the client with the aid of a federal magistrate to facilitate informal procedures.
  • Successfully defended state trademark and unfair competition claims brought by a competing business against a client with a similar trade name through dispositive motion, resulting in no damages or injunctive relief being awarded.
  • Successfully defended a federal trademark infringement and Lanham Act case on behalf of a foreign corporation, resulting in a settlement that was less than the amount owed on an outstanding contract.
  • Successfully defended a major mortgage finance company that developed and used process software against multiple lawsuits claiming trade secret misappropriation, copyright infringement and violations of the Computer Fraud and Abuse Act pertaining to process software. The lead case settled two weeks into the trial on terms favorable to the client, resolving all remaining suits.
  • Successfully prosecuted trade secret misappropriation claims against a competitor software development company, resulting in complete settlement of three cases in two states with a net recovery to the client.
  • Represented major entertainers in copyright infringement lawsuits pertaining to unauthorized sampling of prior works. The matters were successfully resolved in the clients’ favor.
  • Defended a software developer as trial counsel (co-counseled with a national law firm) in a patent infringement suit alleging infringement of code processes. The matter was successfully resolved through settlement on terms favorable to the client.
  • Prosecuted a copyright infringement case on behalf of a graphic artist against a marketing firm using its images. The matter was settled favorably for the client notwithstanding significant defenses advanced by the marketing firm.
  • Prosecuted an attorney malpractice action seeking multimillion-dollar damages stemming from the firm’s failure to obtain foreign patents. The matter was successfully resolved by settlement.

TECHNOLOGY LITIGATION

  • Defend a website and software developer against a financial institution asserting claims for breach of contract and professional negligence. The matter was resolved before trial on very favorable terms.
  • Defended a website and software developer against claims by a major retailer asserting claims for breach of contract and professional negligence. On behalf of all parties, the case was privately settled pre-suit to avoid publicity.
  • Prosecuted fraud and breach of contract and business tort claims on behalf of a distributor of handheld voting devices against the manufacturer, resulting in favorable settlement on the client’s behalf, including acquiring intellectual property rights in the underlying technology.
  • Defended a software developer against claims for fraud and breach of contract resulting from delay in a rollout, disputes over scope of work and functionality of the final product. The cases successfully resolved through mediation.
  • Prosecuted an internet marketing company’s defamation and economic interference claims against a self-styled spam watchdog group, obtaining an $11.7 million judgment and a permanent injunction. The judgment was upheld on appeal while the issue of the amount of damages was remanded for trial.
  • Prosecuted a major internet service provider for defamation of a client’s finance business through misuse and restyling of content provided by a third party. A creative favorable settlement was reached involving payment of damages, awarding future credits and establishing an ongoing business relationship for revenue-generating collaborative projects.
  • Defended an internet marketer in numerous lawsuits involving alleged CAN-SPAM Act and related state law violations. All matters were favorable settled early in litigation after aggressive defense, pointed discovery and dispositive motions.
  • Defended a defamation claim with underlying trademark issues involving the ownership of similar trade names in the same industry. Notwithstanding an extremely aggressive prosecution, the matter was successfully settled for a fraction of the amount claimed in the lawsuit and requested during extensive mediation.
  • Defended a mobile communications manufacturer in a lawsuit brought by a corporate fleet customer alleging fraud and breach of contract in the sale of nonperforming software and hardware. The matter was resolved to the client’s satisfaction after extensive discovery mitigated claims against it.

COMMERCIAL LITIGATION

  • Represented a major U.S. automaker in numerous claims asserted by current and former dealers alleging Sherman Act, Clayton Act, Robinson Act and other violations resulting from consolidation of dealerships. All the matters were resolved favorably on behalf of the client by dispositive motions to dismiss or motions for summary judgment.
  • Successfully defended a national health care insurer against Sherman Act and Clayton Act claims resulting from service pricing at hospitals.
  • Represented a graphic fiber manufacturer in a class action lawsuit alleging Sherman Act claims.
  • Defended a foreign corporation against Norr-Pennington allegations pertaining to importation of wood and wood products.
  • Prosecuted an investor fraud case resulting in a $5.5 million judgment against a broker, an investment advisor and a brokerage firm.
  • Prosecuted a federal securities fraud case involving a 15-year conspiracy by major brokerage houses resulting in recoupment of lost investments.
  • Successfully prosecuted a fraud case on behalf of a hospital against a major vendor, resulting in a jury verdict for the full amount sought from the jury, punitive damages more than those sought and defense of counterclaims for less than the amount sought by the defendant.
  • Defended minority shareholders in an ownership dispute of a closely held company alleging fraud, breach of fiduciary duty and breach of contract. The matter was successfully resolved at mediation by the minority shareholders buying out the majority interest holder as part of global settlement of claims and counterclaims.
  • Represented a major food franchiser on appeal from a $3.7 million judgment rendered in bankruptcy court adversary proceeding (defended by other counsel) alleging fraud and breach of territorial restrictions in the franchise agreement, resulting in reduction of the damage amount to $70,000.
  • Successfully defended tax attorneys against fraud, negligent misrepresentation and statutory claims brought by disgruntled investors involved in oil and gas subscriptions. The matter was successfully resolved on motions to dismiss and successfully upheld on appeal.
  • Successfully defended a major law firm against allegations of fraud stemming from financial and tax advice pertaining to art investments. The matters were resolved after early assessment and settlement for amounts far less than potential exposure or defense costs.
  • Successfully defended securities attorneys involved in investment placements against a lawsuit claiming violations of the RICO Act, breach of contract fiduciary duty and fraud. The matter was successfully resolved on motions to dismiss.
  • Successfully defended a national insurance company and its agents against numerous lawsuits alleging negligent placement or procurement, fraud and violation of state unfair practices act claims. All matters were resolved without payment of settlement or judgment through dispositive motions and successful appeals.
  • Successfully prosecuted an attorney in an investor fraud matter for malpractice and breach of contract stemming from the attorney’s failure to discover improprieties in financial reporting adversely affecting the value of stock redemption.
  • Represented a Fortune 500 company in restricted covenant matters and an employee piracy case, resulting in a preliminary injunction against the offending former employee and recoupment of the client’s trade secrets and confidential information.
  • Represented a commodities broker against a Fortune 50 corporation for improperly invoking garden-leave provisions and failing to pay substantial bonuses. After successfully surviving summary judgment, the matter was settled for the full amount of the client’s damage claim.
  • Defended former officers of a closely held company after they were employed by a competing firm. The matter was resolved by settlement during trial.
  • Defended a software company from an executive/software developer’s claims for overtime compensation. All but one claim was resolved through summary judgment, with the remaining claim resolved through mediation for less than the cost of defense going forward.
  • Defended a mobile medical imaging company from service technicians’ claims for overtime compensation. The matter was resolved though dispositive motions.

CLASS/COLLECTIVE ACTION LITIGATION

  • Defended numerous nationwide and state consumer class actions brought against mortgage banks alleging violations of RESPA, TILA and related state consumer protection statutes pertaining to fees charged for various services and compliance with disclosure requirements. All matters were favorably resolved by motions to dismiss, motions opposing class certification or preemptively decertifying the class.
  • Defended numerous nationwide consumer class actions brought against automobile finance companies alleging violations of TILA and related state consumer protection statutes pertaining to fees charged for various services and compliance with disclosure requirements. All matters were favorably resolved by settlement or motions to dismiss, motions opposing class certification or preemptively decertifying the class.
  • Defended nationwide antitrust class action alleging concerted action and price fixing among a majority of industry participants. The matter was resolved favorably short of trial.
  • Defended Fair Labor Standards Act collective actions, successfully defeating conditional certification.

News & Events

Publications

Publications

  • “Business Law Flash Points,” IICLE Flashpoints, ongoing“Practical Considerations When Defending Trademark Infringement Lawsuits,” For The Defense, 2014
  • “Attorneys’ Fees in Lanham Act Cases,” For The  Defense, 2012“Effective Case Assessment Programs,” In-House Defense Quarterly, 2011“Modern Presentation Strategies at Trial,” Technology for the Litigator, American Bar Association, 2011
  • “Crafting Subpoenas for Electronic Information,” Technology for the Litigator, American Bar Association, 2010
  • “Trial Technology,” Technology for the Litigator, American Bar Association, publication pending
  • “Trademark Damages,” Defending Intellectual Property Claims: Remedies, DRI, publication pending 
  • Libel and slander chapters, California Causes of Action, James Publishing, updated annually

Speaking Engagements

  • “Cyber Resilience in 2022,” Segal McCambridge Internal CLE Seminar, 2022
  • “Top 10 Trade Secret Cases in 2016,” DRI Annual Meeting, 2016
  • “Defend Trade Secrets Act of 2016,” Illinois Institute for Continuing Legal Education, 2016
  • “Mobility and Restrictive Covenants,” Third Annual Employment Law Institute, Illinois Institute for Continuing Legal Education, 2016
  • “Untangling the Law of Restrictive Covenants in Illinois,” Second Annual Business & Employment Law Institute, Illinois Institute for Continuing Legal Education, 2016
  • “Evidentiary Issues with Expert Witnesses,” Illinois Institute for Continuing Legal Education, 2015
  • “Non-compete Agreements, 16th Annual Business & Employment Law Update,” Illinois Institute of Continuing Legal Education, 2014
  • “Provisional Remedies Seminar: Restraining Orders, Preliminary Injunctions, Expedited Discovery, and Appeals,” Chicago Bar Association, 2013
  • Legal Ethics Update: Ethics of an Internal Investigation,” Illinois Institute for Continuing Legal Education, 2013
  • “The Developing New World of Non-compete Agreements, 15th Annual Business & Employment Law Update,” Illinois Institute of Continuing Legal Education, 2013
  • “Strategies for Dealing with Problem Parties,” Chicago Bar Association, 2013
  • “Restrictive Covenants, 14th Annual Labor and Employment Law Update,” Illinois Institute of Continuing Legal Education, 2011
  • “The Legal Landscape of Net Security: Primer, Protections and Pitfalls,” NetSecure’11 Ninth Annual IT Security and Forensics Conference and Expo, Illinois Institute of Technology, 2010
  • “Employment Law for You and Your Clients,” Six-Part Webinar, Illinois Institute of Continuing Legal Education, 2011
  • “Modern Presentation Strategies at Trial,” Technology for the Litigator, American Bar Association, 2011
  • “Crafting Subpoenas for Electronic Information,” Technology for the Litigator, American Bar Association, 2010
  • “Top 10 Security, Privacy & Forensic Issues & Predictions for 2010,” NetSecure’10 Eighth Annual IT Security and Forensics Conference and Expo, Illinois Institute of Technology, 2010