Robert M. Newbury

Phone: 312-554-7940

Email: rnewbury@pattishall.com

Intellectual Property News

Education

  • Yale Law School (L.L.B., 1959)
  • Carleton College (B.A., 1953)

Bar Admissions

Illinois

Court Admissions

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Industry Expertise

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Honors & Awards

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Representative Appeals

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Representative Trials & Litigation

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Professional Activities

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Robert M. Newbury

How has IP law changed during the time that you've been practicing?
The principal change is that more businesses have come to realize how important their IP assets are. Certainly, at the beginning of my practice, fewer attached importance to their company name and brand. Now, almost every business does, even small businesses. Even start-up companies understand that the name of their company and product will have a substantial value and require protection. And they realize that if they pick a name that isn't available, they'll start out their business by being sued.

What drew you to IP law?
It wasn't as dramatic as you might think. I was in law school, and interviewed with the then-senior partner, William Woodson, who offered me a job. I didn't think I'd like it, but I took a course to find out. I really enjoyed the subject matter, so I accepted the offer when I graduated. Since I'm still here--almost 50 years later--I think I made the right choice!

What appeals to you about it?
Initially, it was intellectually interesting to me. I certainly didn't understand at the outset that this was going to be a trial practice. Unlike so many students coming out of school, I wasn't focused on being a trial lawyer. But IP law involves a great deal of litigation. I stumbled into that aspect, was good at it and it turned out that I love it.

What was your favorite case?
Wow. I would have trouble picking just one. I had a favorite year when I tried three cases, and lost them all. But every one was reversed on appeal. That was an amazing, exhausting, and exhilarating time.

One of those cases made law in the right of publicity for Johnny Carson. A man was using "Here's Johnny" for portable toilets and Carson didn't like it. He came to me to stop it and we filed suit. We lost the trial, because the judge didn't think that the phrase was part of his right of publicity because it wasn't his name. The Court of Appeals disagreed, and the law changed as a result of that opinion.

How did Pattishall's team approach to practice develop?
That developed even before I arrived. I give Beverly Pattishall credit for that. Instead of giving me a stack of low-level assignments, I was put on teams working on big cases the day that I arrived. It's a great approach: Everyone learns from everyone else. It keeps the senior people with experience in charge but gives junior people real experience, helps them to hone their skills and judgment, uses support personal who are experienced, and it keeps the cost reasonable for the client.

What lessons have you learned from mentoring so many young lawyers?
Young lawyers want to learn. For the last five years, that's most of what I've done. Some law firms don't spend the time any more mentoring younger lawyers, but we do. It's good for the firm, good for the clients, and good for the profession. When a junior lawyer watches you in action, not only does he or she learn professionalism, but you also are constantly reminded that you are setting an example.

If you could change one thing about the practice of law, what would it be?
Civility. Too many lawyers have lost their manners and skate too close to ethical lines. You can be aggressive and remain civil to your opponent. They aren't mutually exclusive

Tell me about a time when you suddenly had a "Perry Mason?"moment that decided a case.
It happened twice, both during jury trials. In one case, the other side had submitted a transcript of a radio ad. Based on that transcript, they had witnesses who claimed to be confused about which company's ad it was. But when we played the ad for the jury, it was clear they had left out a full line of the ad transcript. It completely changed the meaning and destroyed the testimony of those witnesses. The jury understood what had happened immediately and lost sympathy for the other side. We won the case.

The other example was a jury trial in Virginia. The principal of the other side changed his testimony from his deposition to the trial. I was able to ask one of those great questions: "Are you lying now or were you lying then?" The jury was finished with the man, and our client won the case.

How would your clients and colleagues describe you as a lawyer?
I hope they would describe me as aggressive but fair.

How have you built relationships with clients that have lasted for years?
I've gotten clients every possible way. Sometimes, I took over clients when other lawyers retired. With those clients, I had to build a personal relationship so they knew that they could rely on me.

Some clients are sent to me by opposing counsel. If we respect one another, when they can't represent a client, they send them to me.

Often, in-house counsel will change companies, and they want me to represent their new company.

The main thing is for your name to be known and respected. If people know that you are respected in the field, they will come to you.

Industry Expertise

  • Consumer Durables & Apparel
  • Food, Beverage & Tobacco
  • Household & Personal Products
  • Telecommunication Services

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Honors & Awards

  • 2018 The Best Lawyers in America® : Recognized in the fields of Litigation - Intellectual Property, and Trademark Law
  • 2017 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2017 The Best Lawyers in America® : Recognized in the fields of Litigation - Intellectual Property, and Trademark Law
  • 2017 The Best Lawyers in America® : Recognized in the field of Patent Law
  • 2016 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2016 Best Lawyers in America, 22nd Edition : One of the Best Lawyers in America for 25 years in the practice areas of Litigation-Intellectual Property, Patent Law and Trademark Law
  • 2015 Global Law Experts : IP Attorney of the Year in Illinois
  • 2015 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2015 Corporate INTL Magazine Global Awards : Recognized as the 2015 "IP Attorney of the Year in Illinois"
  • 2015 Best Lawyers : Litigation-Intellectual Property, Patent Law, Trademark Law "Lawyer of the Year"
  • 2014 Leading Lawyer Magazine, Business Edition : Recognized as a Leading Lawyer in Copyright & Trademark Law and Intellectual Property Law for the State of Illinois
  • 2014 American Lawyer Media and Martindale-Hubbell : Selected as a 2014 Top Rated Lawyer in Intellectual Property
  • 2014 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2013 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
  • 2013 Chicago's Best Lawyers : A "Best Lawyer in Chicago" in intellectual property law
  • 2013 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2012 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
  • 2012 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2011 The Best Lawyers in America 2011 : A "Best Lawyer in America" for 10 years or longer in intellectual property law
  • 2011 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2010 Leading Lawyers Magazine, Business Edition : Selected as a "Top Business Lawyer in Intellectual Property Law in Illinois"
  • 2010 Chicago's Best Lawyers : Selected as one of Chicago's Best Lawyers in Intellectual Property Law
  • 2010 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2009 Chicago Lawyer Magazine : Selected as a "Top Intellectual Property Lawyer in Illinois" by Leading Lawyers Network
  • 2009 Leading Lawyers Network Magazine : A "Leading Lawyer" in Intellectual Property
  • 2008 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2008 Best Lawyers in America 2008 Edition : A "Best Lawyer in America" for 10 years or longer in intellectual property law
  • 2007 Leading Lawyers Network Magazine : Named a "Leading Lawyer" in Intellectual Property Law
  • 2006 American Intellectual Property Law Association : Recognized as an AIPLA Fellow for outstanding service in the profession, learned contributions to the profession and highest standards of ethical conduct
  • 2006 Best Lawyers in America 2006 Edition : A "Best Lawyer in America" for 10 years or longer in intellectual property law
  • 2006 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2005 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law
  • 2004 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law

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Representative Appeals

  • Lucent Information Management Inc. v. Lucent Technologies Inc., 186 F.3d 311 (3d Cir. 1999, Judge Greenberg) (summary judgment dismissing complaint) (Trademark Infringement)
  • Plus Products v. Plus Discount Foods, Inc. and The Great Atlantic & Pacific Tea Co., 722 F.2d 999 (2d Cir. 1983, Judge Bartels) (trial court decision granting injunction reversed) (Trademark)
  • Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934 (10th Cir. 1983, Judge Seymour) (trial court decision dismissing complaint reversed) (Trademark)
  • Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983, Judge Brown) (trial court decision granting summary judgment reversed) (Rights of Publicity and Privacy)
  • National Conference of Bar Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478 (7th Cir. 1982, Judge Swygert) (trial court decision affirmed on copyright infringement and reversed on trademark infringement) (Copyright)

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Representative Trials & Litigation

  • Donnay USA Limited v. Donnay International S.A., International Brand Management Limited, and Brands Holdings Limited, Case No. 15-cv-05969-JMA-SIL (E.D.N.Y., 2015, Judge Azrack) (DONNAY trademark licensee disputing termination and seeking $190,000,000; case dismissed on our motion 9/1/2016; plaintiff appealed to the Second Circuit Court of Appeals (No. 16-3067), dismissal affirmed on 8/24/2017) (Tort Claims, Trademark License Dispute)
  • Suncast Corp. v. PBM Group, Inc. , C.A. No. 1:12-cv-00963 (N.D. Ill., Judge Pallmeyer) (settled) (Trademark, Trade Dress Infringement)
  • KLN Enterprises, Inc. v. Ferrara Pan Candy Co., Inc. , C.A. No. 0:12-cv-00365-DWF-LIB (D. Minn. 2012, Judge Frank) Opposition Nos. 91200871 and 91203729 (PEANUTHEAD vs. NUTHEADS, settled) (Trademark, Declaratory Judgment)
  • In Re Certain Automotive Measuring Devices and Products Containing Same and Bezels for Such Devices, Case No. 337-TA-494 (International Trade Commission 2005) (settled by agreement after months of discovery) (Trade Dress)
  • Lucent Technologies Inc. v. Johnson, 56 U.S.P.Q.2d 1637 (C.D. Cal. 2000, Judge King) (settled by agreement during preliminary injunction and motion to dismiss hearing) (Trademark Infringement)
  • Lucent Information Management, Inc. v. Lucent Technologies, Inc., 1999 WL 1057262, 5 F.Supp.2d 238 and 986 F.Supp. 253 (D. Del. 1999, 1998 and 1997, Judge McKelvie) (summary judgment granted dismissing complaint) (Trademark Infringement)
  • AT&T v. MCI (Between 1991 and 1998, Pattishall attorneys represented AT&T in over four hundred arbitration or mini-trials on false advertising claims) (ADR, arbitration, Mediation, and Expert Witnesses)
  • Avon Products, Inc. v. S.C. Johnson & Sons, Inc., 984 F.Supp. 768 (S.D.N.Y. 1997) (BENCH TRIAL-complaint and counterclaims dismissed) (Advertising Promotions)
  • Holiday Inns, Inc. v. 800 Reservation, Inc., Earthwinds Travel, Inc. d/b/a Earthwinds Travel Agency, and Call Management Systems, Inc., 86 F.3d 619 (6th Cir. 1996, Judge Daughtrey) (Trademark)
  • The Walt Disney Co. v. Great American Corp., 28 U.S.P.Q.2d 1130 (M.D. Tenn. 1993, Judge Morton) ($1.5 million award) (Trademark Infringement)
  • AT&T v. Eastern Telecom, Case No. 4:1992-cv-00072 (E.D. Va. 1993) (JURY TRIAL-jury verdict for $110,000-injunction granted by Court) (General)
  • GFA Brands, Inc. v. Canbra Foods, Ltd and Campbell-Mithun-Esty Inc., Case No. 3:1990-cv-00150 (N.D. Cal. 1990, Judge Henderson) (JURY TRIAL-jury verdict for defendants-complaint dismissed) (General)
  • Walt Disney v. Buena Vista, 217 U.S.P.Q. 1370 (C.D. Cal. 1982, Judge Kelleher) (preliminary injunction granted) (Trademark Infringement)
  • Walt Disney Productions v. Kusan, Inc., 204 U.S.P.Q. 284 (C.D. Cal. 1979, Judge Williams) (preliminary injunction granted) (General)
  • Amoco Oil Co. v. Amerco, Inc., 192 U.S.P.Q. 729 (TTAB 1976, Judges Lefkowitz, Bogorad and Kera) rehearing denied 201 U.S.P.Q. 126 (TTAB 1978, Judges Lefkowitz, Bogorad and Kera) (opposition sustained by Board decision) (General)
  • East Side Jersey Dairy, Inc. v. Jewel Companies, Inc., 197 U.S.P.Q. 535 (S.D. Ind. 1977, Judge Steckler) (BENCH TRIAL-complaint dismissed) (General)
  • Parr Instrument Co. v. Princeton Applied Research Corp., 178 U.S.P.Q. 250 (TTAB 1973, Judges Leach, Lefkowitz and Shryock) (opposition sustained by Board decision-subsequently settled after civil action was filed by client) (General)

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Professional Activities

  • American Bar Association, IP Section : Former Member of Council; Former Division and Committee Chair in Trademarks and Copyrights
  • American Intellectual Property Law Association : Former Chair, Various Committees; Former member, Board of Directors
  • The Intellectual Property Law Section of the ABA : Former Chair, Various Committees
  • The Copyright Society : Former Member, Board of Directors (two terms)
  • John Howard Association : Former President
  • Practising Law Institute : Past lecturer on trademark and copyright law

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Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Sixth Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. Court of Appeals for the Eighth Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Tenth Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Eastern District of Wisconsin
  • Supreme Court of Illinois

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