Robert M. Newbury (1931–2022)

We at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP are sad to report the passing of our longtime Partner, Bob Newbury.

Bob’s introduction to trademark, unfair competition, and copyright law (now subsumed into the terminology, “Intellectual Property law”) began when he was a student at Yale Law School, and interviewed for a job at our firm.  William Woodson, our Senior Partner at the time, recognized Bob’s intellect and quick wit, and offered him a position on the spot.  Bob hesitated because he didn’t know much about IP law, and wasn’t sure he would like it enough to work for a specialized firm.  But he took a course to find out and was pleasantly surprised.  He accepted Mr. Woodson’s offer, and started as an Associate when he graduated in 1959.

Throughout his 60+ year career, Bob became a consummate expert in IP law, and a brilliant trial and appellate lawyer.  Bob represented AT&T in over 700 cases, as well as Johnson Wax, NCR, and Jewel Foods in major IP litigation, to name just a few prominent clients.  When asked his favorite case, Bob would say it was hard to pick just one, but easy to pick his favorite year, when he tried three cases, lost them all, but then had all three reversed on appeal.  He said that year was “an amazing, exhausting, and exhilarating time.”

In one of those cases he represented Johnny Carson, legendary host of “The Tonight Show,” who Ed McMahon introduced every night on TV with a booming, “Here’s Johnny.”  A portable toilet company was advertising and selling porta-potties under the phrase “Here’s Johnny,” and Carson was not amused.  He hired Bob to enjoin the tarnishing and damaging impact this was causing to his name and reputation, and Bob filed suit.  This was very early in the development of “right of publicity” cases, and the trial judge did not think the phrase was actionable because it was not exactly Mr. Carson’s name, so he ruled against him.  On appeal, however, the reviewing court disagreed, accepted Bob’s arguments, and right of publicity law changed as a result.

Bob was a generous and supportive mentor to the firm’s younger lawyers.  However, he never compromised his high standards of legal knowledge, intellectual integrity, concise writing, and persuasive presentation.  He was always “generous” with critiques and “suggested” revisions to Associates’ work product, and they always handed drafts to him with more or less trepidation. Bob believed strongly in the importance of mentoring and its benefits for the lawyer, the firm, the clients, and our profession.

Bob’s passionate devotion to professional excellence extended far beyond the firm itself.  He was an active and energetic bar leader and speaker in the major local and national professional associations that dealt with IP law and lawyers, such as the American Bar Association’s Section of Intellectual Property Law, the American Intellectual Property Law Association, and the Copyright Society of the USA.  In the ABA IPL Section, he was proud to have served, at different times, as Chair of both the Trademark and Copyright Divisions.  In the AIPLA, he was a member of the Board, and was also proud to have co-authored a draft intent-to-use procedure amendment to the U.S. Trademark Act.  The draft was shorter and simpler than the statutory amendment eventually enacted by Congress, but it had its own influence.

Bob’s guiding principles in the practice of law for 60+ years were ethical integrity, civility, and mutual professional respect.  He believed aggressive advocacy and civility with your opponent were not mutually exclusive, and that embracing both behaviors promotes professionalism, respect of judges, and results for clients.

Bob Newbury was a brilliant lawyer, a true gentleman, and a great friend, and we will miss him very much.