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Joseph L. Kish

Shareholder | jkish@smsm.com
Shareholder | Chicago, IL
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Joseph L. Kish is a Shareholder in Segal McCambridge's Chicago office. Having joined the firm in 2018, Mr. Kish brings notable, career-long litigation experience with him. He devotes a significant portion of his practice to the defense of business litigation, complex commercial, technology, and intellectual property law matters. He is also skilled in the defense of employment matters, namely employment mobility actions and state and federal employment discrimination actions. Over the course of Mr. Kish's career, he has represented and counseled clients in matters requiring class action. He represents clients in defense of data breach, privacy, fraud, defamation, professional negligence and breach of contract claims. Mr. Kish is highly focused on and skilled at risk and liability management, often times counseling clients in large scale documentary evidence and electronic discovery productions.

A seasoned trial attorney, Mr. Kish maintains a national trial practice. He has represented clients at both the trial and appellate levels in federal and state courts in a myriad of different jurisdictions nationally. Mr. Kish is licensed to practice in Illinois and California and is admitted to the bars of district and circuit courts across the country.

Outside of private practice, Mr. Kish is frequently called upon to present on matters of law central to his work as a trial attorney. In his role on faculty for the National Institute of Trial Advocacy, Mr. Kish teaches trial advocacy and 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 Defense Research Institute, the Illinois Institute of Continuing Education and for different bar associations. Notably, Mr. Kish is the General Editor for Illinois Institute of Legal Education's Business and Commercial Litigation 2018 and author on Expert Witnesses. He has also authored libel and slander chapters for California Causes of Action, an attorney practice book.

Mr. Kish received his J.D. from DePaul University College of Law. There, he was President of the Moot Court Society and was a member of the DePaul Law Review. Before that, Mr. Kish 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, Mr. Kish was Associate Editor of the Michigan Journal of Political Science.

Honors

  • Illinois Super Lawyers, Business Litigation
  • Wiley Manuel Public Service Award Recipient
  • National Registry of Who's Who, Life Member

Professional & Civic Involvement

  • American Bar Association
  • Chicago Bar Association (Former Chair, Commercial Litigation Committee)
  • Los Angeles County Bar Association
  • Defense Research Institute (Chair, Intellectual Property Copyright SLG; Vice Chair, Trademark SLG; IP Seminar Planning Committee; Steering Committee)
  • Society for Human Resource Management
  • Professional Liability Underwriting Society

INTELLECTUAL PROPERTY LITIGATION

  • Defended trade secret case in Indiana State Court, achieving an extremely favorable settlement on the first day of trial.
  • Co-counsel with California firm defending trade secret misappropriation case on behalf of technology staffing agency. Case is currently pending in Cook county Chancery Division.
  • Defended trade secret and restrictive covenant case in Lake County on behalf of technology personnel staffing company, resulting n recoupments of all fees owed to client and partial attorneys’ fees.
  • Defended trademark, copyright, trade dress and Lanham Act case against Israeli manufacturer and California distributor. Case is currently pending in the Northern District of Illinois.
  • Defended federal trademark, copyright infringement, Lanham Act, and counterfeiting claims against computer manufacturer brought by major software company seeking multiple million dollars in damages. Case was successfully mediated after aggressive discovery and investigation revealed viable defenses to each claim.
  • Defended modelling agency against claims of copyright infringement, breach of privacy rights and rights of publicity. Obtained successful settlement on behalf of client early on with the aid of federal magistrate facilitating informal procedures.
  • Successfully defended state trademark and unfair competition claims brought by competing business against client with similar trade name through dispositive motion resulting in no damages or injunctive relief being awarded.
  • Successfully defended federal trademark infringement and Lanham Act case on behalf of foreign corporation resulting in a settlement that was less than the amount owed on an outstanding contract.
  • Successfully defended 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 client, resolving all remaining suits.
  • Successfully prosecuted trade secret misappropriation claims against competitor of client, a software development company, resulting in the 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. Matters were successfully resolved in clients’ favor.
  • Defended software developer as trial counsel (co-counseled with national law firm) in patent infringement suit alleging infringement of code processes. Matter was successfully resolved through settlement on terms favorable to client.
  • Prosecuted copyright infringement case on behalf of graphic artist against marketing firm using its images. The matter was settled favorably for client notwithstanding significant defenses advanced by marketing firm.
  • Prosecuted attorney malpractice action seeking multimillion-dollar damages stemming from firm’s failure to obtain foreign patents. Matter was successfully resolved by settlement.

TECHNOLOGY LITIGATION

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

COMMERCIAL LITIGATION

  • Represented major United States automaker in numerous claims asserted by current and former dealers alleging Sherman Act, Clayton Act, Robinson Act, and violations resulting from consolidation of dealerships. All matters resolved favorably on behalf of client by dispositive motions to dismiss or motions for summary judgment.
  • Successfully defended national healthcare insurer against Sherman Act and Clayton Act claims resulting from service pricing at hospitals.
  • Represented graphic fiber manufacturer in class action lawsuit alleging Sherman Act claims.
  • Defended foreign corporation against Norr-Pennington allegations pertaining to importation of wood and wood products.
  • Prosecuted investor fraud case resulting in $5.5 million judgment against broker, investment advisor, and brokerage firm.
  • Prosecuted federal securities fraud case involving 15-year conspiracy by major brokerage houses resulting in recoupment of lost investments.
  • Successfully prosecuted fraud case on behalf of hospital against a major vendor resulting in jury verdict for full amount sought from the jury and punitive damages in excess of those sought as well as defense of counterclaims for less than amount sought by Defendant.
  • Defended minority shareholders in ownership dispute of closely held company alleging fraud, breach of fiduciary duty and breach of contract. Matter successfully resolved at mediation by minority shareholders buying out majority interest holder as part of global settlement of claims and counterclaims.
  • Represented 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 franchise agreement, resulting in reduction of 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. Matter was successfully resolved on motions to dismiss and successfully upheld on appeal.
  • Successfully defended major New York law firm against allegations of fraud stemming from financial and tax advice pertaining to art investments. Matters were resolved after early assessment and settlement for amounts far less than either potential exposure or defense costs.
  • Successfully defended securities attorneys involved in investment placements against lawsuit claiming violations of RICO, breach of contract fiduciary duty, and fraud. Matter was successfully resolved on motions to dismiss.
  • Successfully defended national insurance company its agents against numerous lawsuits alleging negligent placement or procurement, fraud, and violation of state unfair practices act claims. All matters resolved without payment of settlement or judgment through dispositive motions and successful appeals.
  • Successfully prosecuted attorney in investor fraud matter for malpractice and breach of contract stemming from attorney’s failure to discover improprieties in financial reporting adversely affecting value of stock redemption.
  • Represented Fortune 500 Company in restricted covenant matters and employee piracy case, resulting in a preliminary injunction against offending former employee and recoupment of client’s trade secrets and confidential information.
  • Represented commodity broker Fortune 50 Corporation for improperly invoking garden leave provisions and failing to pay substantial bonuses. After successfully surviving summary judgment matter settled for the full amount of clients damage claim.
  • Defended former officers of closely held company after resigning company to competing firm. Matter was resolved by settlement during trial
  • Defended software company from 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 going forward cost of defense.
  • Defend mobile medical imaging company form service technicians’ claims for overtime compensation. Matter 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 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 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 majority of industry participants. Matter was resolved favorably short of trial.
  • Defended Fair Labor standards Act collective actions, successfully defeating conditional certification.

Media Quotes

INTERNET PRIVACY GUIDE: Protect Your E-Mail; Keep Your Private Words from Prying Eyes, quoted in Macworld, (July 2000).

SPEAKING ENGAGEMENTS 

"Top 10 Trade Secret Cases in 2016," Defense Research Institute Annual Meeting, Presenter (October 2016). 

"Defend Trade Secrets Act of 2016," Illinois Institute for Continuing Legal Education,  Teleseminar Presenter (June 2016).

"Mobility and Restrictive Covenants,"3rd Annual Employment Law Institute, Illinois Institute for Continuing Legal Education, Presenter (May 2016).

"Untangling the Law of Restrictive Covenants in Illinois," 2nd Annual Business & Employment Law Institute, Illinois Institute for Continuing Legal Education, Presenter (April 2015).

"Evidentiary Issues with Expert Witnesses," Illinois Institute for Continuing Legal Education, Presenter (January 2015).

"Non-compete Agreements, 16th Annual Business and Employment Law Update," Illinois Institute of Continuing Legal Education, Presenter (April 2014).

"Provisional Remedies Seminar: Restraining Orders, Preliminary Injunctions, Expedited Discovery, and Appeals," The Chicago Bar Association, Moderator (October 2013).

Legal Ethics Update: Ethics of an Internal Investigation," Illinois Institute for Continuing Legal Education, Presenter (May 2013).

"The Developing New World Of Non-compete Agreements, 15th Annual Business and Employment Law Update," Illinois Institute of Continuing Legal Education (April 2013).

"Strategies for Dealing with Problem Parties," Chicago Bar Association, Presenter (April 2013). 

"Restrictive Covenants, 14th Annual Labor and Employment Law Update, Illinois Institute of Continuing Legal Educatio," (April 2011).

"The Legal Landscape of Net Security: Primer, Protections and Pitfalls," NetSecure'11, the 9th Annual IT Security and Forensics Conference and Expo, Illinois Institute of Technology, Presenter (March 2010).

"Employment Law for You and Your Clients," six-part webinar encompassing Employee Credit Privacy Act, Employee Handbooks, Employment Contracts, Restrictive Covenants, Employee Classifications, and Employment Counseling, for the Illinois Institute of Continuing Legal Education, ( January-June 2011).

"Modern Presentation Strategies at Trial" Technology for the Litigator (ABA) (Winter, 2011).

"Crafting Subpoenas for Electronic Information," Technology for the Litigator (ABA), (Fall, 2010).

"Top 10 Security, Privacy & Forensic Issues & Predictions for 2010," NetSecure'10, the 8th Annual IT Security and Forensics Conference and Expo, Illinois Institute of Technology, Presenter (March 2010).

"Second Annual Intellectual Property Law Institute for Corporate Counsel," moderator of day-long seminar and presenter and author of Trade Secrets Update, for the Illinois Institute of Continuing Legal Education, (April 2008). 

"Email and Internet Security," MACWORLD Annual Meeting, San Francisco, CA, Presenter (January 2000).

"Emerging Bad Faith Issues," Association of Defense Counsel’s Annual Bad Faith Seminar, Monterey, CA, Presenter (July 2000).

"Formal And Informal Ways To Encourage And Support Development, " Third Annual Law Firm Associate Management Forum (Fulcrum Information Services), Washington D.C., Presenter (May 2000).

"Theories of Liability Arising out Of the Conduct of E-Business, and Insurance Seminar," Southwest chapter of the Professional Liability Underwriting Society, Atlanta, GA, Presenter (April 2000).

"Roundtable on Internet Privacy and Security," MACWORLD EXPO 2000, San Francisco, CA, Presenter (January 2000).

"Internet liability: E-Commerce And The Insurance Industry," Professional Liability Underwriting Society’s Annual International Conference, New York City, NY, Presenter (November 1999).

"Keeping Your Secrets Safe: Understanding and Managing the Risks of E-Mail and Internet Communications," Bar Association of San Francisco, the San Francisco Bank Attorneys Association, and numerous corporate in-house counsel, San Francisco, CA, Presenter (1998-2001).

"Class Actions in the Age of Information Technology," presented to numerous financial institutions as part of continuing in-house legal education series, (1998-2000).

ARTICLES & PUBLICATIONS

Business Law Flash Points, author for monthly newsletter for the Illinois Institute of Continuing Legal Education (ongoing).

Practical Considerations When Defending Trademark Infringement Lawsuits, author, For the Defense, (January 2014).

Attorneys’ Fees in Lanham Act Cases, author, For the Defense (March 2012).

Effective Case Assessment Programs, author, In-House Defense Quarterly (Fall, 2011).

Modern Presentation Strategies at Trial, ABA's Technology for the Litigator (Winter 2011).

Crafting Subpoenas for Electronic Information, ABA's Technology for the Litigator (Fall 2010).

The Seventh Circuit’s view of Jurisdictional Issues Involving the Foreign Trade Antitrust Improvements Act May Apply to Numerous Other Commerce Related Statutes as Well, author, International Association of Defense Counsel (IADC) Business Litigation Committee Newsletter, (May 2003).

Defense Counsel Should Consider an Offer of Judgment Early On in the Class Action Context, author, International Association of Defense Counsel (IADC) Class Action and Multi-Party Litigation Committee Newsletter (September 2002).

Protecting The Privilege: A State-By-State Survey Of Cases In Which Courts Have Considered Policyholder Efforts To Deny The Protection of the Attorney-Client Privilege Or Work Product Doctrine To Communications Between Insurers and Counsel, contributing reporter for California, (September 2001).

AUTHOR

Technology for the Litigator, Chapter on Trial Technology, American Bar Association, (publication date pending).

Defending Intellectual Property Claims: Remedies, Chapter on Trademark Damages, Defense Research Institute, (publication date pending).

Business and Commercial Litigation, general editor and author of chapter on expert witness, for the Illinois Institute of Continuing Legal Education (2007, 2010).

California Causes of Action, author of chapters on Libel and Slander, published by James Publishing (updated annually).

Clerkships

  • Judicial Extern to the Honorable William T. Hart, District Judge, Northern District of Illinois

Education

DePaul University, College of Law, J.D. (1988)

University of Michigan, Ann Arbor, B.G.S. (1983)

Admissions

  • Illinois
  • California
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Eastern District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Central District of Illinois
  • U.S. District Court fot the Northern District of Illinois & Trial Bar