Jeremiah D. McAuliffe (Ret.)

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312-554-7930

jmcauliffe@pattishall.com

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You've practiced IP law for more than 50 years. How has it changed during the time that you've been practicing?
When I began, the trademarks and unfair competition area was largely ignored. People considered it arcane. In the international scene, trademarks and patents were referred to as "industrial property rights." As copyright became increasingly important it was more accurate to use the umbrella term, "intellectual property rights."

The significance of IP rights came about in an unexpected way. When the M&A mania began, and companies were acquiring one another, and borrowing huge sums of money by pledging corporate assets, the assets were valued very carefully, sometimes for the first time. When they added up the numbers, the most valuable asset wasn't the product, the factory or the workforce, but the brand name. This was pledged to the lenders as security valued in the millions. It was so valuable because it couldn't be reproduced elsewhere more cheaply, and many such assets had acquired not only national rights but international as well.

The RJR Nabisco acquisition was an example of this. Paralegals worked all summer to identify all the IP assets. The trademarks were enormously valuable. That realization alerted other business lawyers to the fact that brands were valuable corporate assets, and worth the expense to protect.

How was Pattishall McAuliffe started?
Beverly Pattishall and I were Navy buddies, coming off active duty in 1946 and serving together in the Reserves. In 1952, I was in general practice. Pattishall asked me to join his practice, and luckily I said yes! There were just three lawyers.

What made the firm unique was that we understood-from the beginning-that IP law was inherently an international practice. I don't just mean that you had to be aware of the treaties but that you had to be prepared to protect and defend U.S. trademarks around the world on a country-by-country basis. Even then, we understood that protecting a brand in the U.S. was only a part of the job. We worked to develop a network of law firms all around the world, and that network still exists today. I learned to speak Spanish, and traveled all across Central and South America. There are more Spanish-speaking countries than any other language in the world, so we were a little ahead of our time. I worked with three others to establish the Inter-American Association for Protection of Industrial Property Rights.

Eventually, IP firms recognized the need to be international, but we were the first in the U.S. This firm has had three presidents of the U.S. delegation to the International Association for the Protection of Industrial Property. Pattishall was president of the U.S. Group and which hosted the AIPPI Congress in the U.S. in 1956. I followed him some years later. Bob Sacoff is currently president of the U.S. Group, arguably the most significant national group of AIPPI.

What was your favorite case?
It turned out to be a copyright case that went all the way to the Supreme Court. Our client, Haines and Company of Akron, Ohio, was sued by Illinois Bell for printing a cross-street directory. Bell claimed our client infringed its copyright in its telephone directory. We argued the data in the telephone directory was in the public domain and the alphabetic arrangement of telephone subscribers was a mechanical expression not deserving of copyright as such.

The District Court and the 7th Circuit ruled against us, and the Supreme Court granted the petition for cert. We got a unanimous reversal by the Supreme Court. Amazing, really. They decided it on the pleadings-it was so clear-cut to them. The Supreme Court held the phone book was not sufficiently creative to give Illinois Bell a monopoly. They remanded the case to the Court of Appeals for entry of judgment in favor of our client.

How did Pattishall's team approach to practice develop?
We were neophytes in the formation of our practice and, relied on whoever in the office had any interest or experience in the area. Some people were good writers, some had very personal relationships with other lawyers, which led to referrals, others were developing expertise in their new areas with a good deal of enthusiasm for what looked like a bright future, and others were good trial lawyers, so everyone worked on everything.

It was very dynamic: Pattishall understood that the international aspect would be very important, and that was what I took on. I developed the contacts around the world, so we could tell a client that we could represent them around the world with personal knowledge of our associates' ability.

What industries have you focused on during your career?
I didn't really focus. I did everything. My clients went from shoes to skin lotion to laboratory testing. We represented Florsheim when they sued Fendi over their Double F trademark, and we deposed Fendi in Italian!

If you could change one thing about the practice of law, what would it be?
The practice of law has become unnecessarily contentious. If people were more civil, professional and functioned with respect for personal integrity, it would be better.

Why is Pattishall such a diverse firm?
I've always loved lawyers of different nationalities. I was working every day with foreign colleagues. So lawyers of different backgrounds were easily accepted in this firm. We never were obdurate. We were a premier trademark firm, and we wanted people who could perpetuate our high standards. The qualifications were simple: attorneys needed to be worldly and smart.

How has the experience of practice improved during your time as a lawyer?
One thing that is better is the use of computers. I used to haul home international trademark gazettes from around the world searching for marks that conflicted with our clients' trademark rights. Now that is all done by computer.