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.
- 2021 Martindale Hubbell Bar Register : AV® Rated Preeminent Lawyer for 2022
- 2020 The Best Lawyers in America® 2021 : Recognized in the fields of Litigation - Intellectual Property Law, and Trademark Law
- 2019 The Best Lawyers in America® : Recognized in the fields of Litigation - Intellectual Property, and Trademark Law
- 2019 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
- 2018 The Best Lawyers in America® : Recognized in the fields of Litigation - Intellectual Property Law and Trademark Law in Illinois
- 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 Best Lawyers : Litigation-Intellectual Property, Patent Law, Trademark Law "Lawyer of the Year"
- 2015 Corporate INTL Magazine Global Awards : Recognized as the 2015 "IP Attorney of the Year in Illinois"
- 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
- 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
- 2012 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
- 2011 Best Lawyers in America 2008 Edition : A "Best Lawyer in America" for 10 years or longer in intellectual property law
- 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
- 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 2006 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
- 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)
- Atlantic Richfield Company et al. v. G&G Oil & Gas Corp., Case No. 3:2005-cv-01067 (M.D. Tenn. 2006, Judge Campbell) (Trademark, Trade Dress Infringement)
- ChevronTexaco Corp. v. Castrol Ltd., Opposition No. 91156899 (TTAB 2006) (Trademark)
- JLJ Inc. v. Santa's Best Craft LLC and Monogram Licensing, Inc., Case No. 3:2002-cv-00513 (S.D. Ohio 2005, Judge Rose) (Trademark Infringement)
- 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)
- 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)
- 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