Sotomayor — one of us?

Originally posted 2009-06-02 12:13:08. Republished by Blog Post Promoter

There’s been a lot of talk about U.S. Circuit Court Judge Sotomayor’s nomination to the Supreme Court by President Obama in the context his controversial emphasis on “empathy” as a desirable quality in a judicial nominee.  Well, check out this empathetic note from  Counterfeit Chic:

Counterfeit Chic knew that Sonia Sotomayor’s nomination to the Supreme Court was a historic moment — but it just gets better and better.  According to the National Law Journal, Sotomayor’s years in practice were spent fighting fakes, in particular for Italian luxury label Fendi.

So who needs confirmation hearings?

Well, really!  There’s more, lots of it:

Sotomayor spent eight years at New York firm Pavia & Harcourt, where she represented Italian luxury goods retailer Fendi in its fight against knockoff handbags bearing the designer’s logo. Fendi was one of Sotomayor’s major clients when she was an associate and later a partner specializing in intellectual property litigation.

Sotomayor worked at the firm between 1984 to 1992, following a stint as an assistant district attorney in New York City and before her appointment to the U.S. District Court for the Southern District of New York by President George H.W. Bush.

Actually pretty impressive — and an exciting prospect, the idea of a judge in the highest of places who actually has hands-on intellectual property experience and maybe a little passion for the topic too.  Maybe even fiery passion:

With Sotomayor in charge, the firm decided in 1986 to stage a bonfire – to be known as the “Fendi Burn” – in the parking lot of the Tavern on the Green restaurant. There was a catch, however: the New York Fire Department refused to permit it.

So the firm decided on the next best thing, crushing the items in garbage trucks, in an event that came to be known as the “Fendi Crush.”

“In the presence of the press…we threw masses and masses of handbags, shoes, and other items into these garbage trucks,” Pavia recalled today. “It was the pinnacle of our achievement, and Sonia was the principal doer.”

Identity politics are an unfortunate basis for choosing a judicial nominee.  But “identity” professional experience is quite another thing, because, of course, that is professional experience.  Right now the judiciary suffers from a serious lack of genuine professional experience in, and thorough understanding of, the trademarks field, and never has it been needed more.

Ron ColemanI would like to think that just as as a former prosecutor, Judge Sotomayor is no “pro-prosecution judge,” there is no reason to believe that as a former IP-rights enforcer, she would necessarily be a reactively “pro-rights-holder” justice, either.

Engaging now in the the gross exercise of tallying up “who won?” scores in IP cases — usually not a meaningful analysis over a relatively small universe — the results are mixed, as they should be.   Blogger Michael Cohen reports on one case in which she did, in fact, rule in favor of a copyright holder.  But there are many cases and a great deal of intellectual power on display in them.  She voted to affirm the decision in a case reported on here, PRL USA Holdings v. U.S. Polo Ass’n, Inc., which favored the putative infringer, but the key issue there was the rules of evidence, not trademark; but in Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004), she did indeed uphold a lower court ruling rejecting an infringement claim, holding that

Turning to the question of whether “Quilted Northern Moist-Ones” is, when presented as a whole, confusingly similar to “Wet Ones,” we agree with the district court that it is not. Though “moist” and “wet” are almost synonymous, the words are dissimilar in sound and appearance. There are also differences in the way the products are “packaged and presented to consumers.”

Of course, plenty of judges can and do perfectly good LIKELIHOOD OF CONFUSION analysis, even if others are too lazy to bother.  But a justice who has herself  “squeezed the Charmin” at some point could make a difference in the future development of trademark law, which to no small extent the judiciary — acting largely in an unjustifiable legislative vacuum, as Cory Doctorow and others have argued for a long time — has left hopelessly unraveled.

Considering all this, the Sotomayor nomination is an exciting development for trademark lawyers, trademark owners and people who wish the first two categories would leave them alone so they can compete in the free market.

UPDATE:  Walter Olson finds himself magnetically drawn to this display of Likelihood of Attraction.  And so he should, for there is little that is  “conservative” or “free market” about the current state of affairs in trademark and copyright law.

UPDATE EVEN:  Mike Atkins has more.

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Author:Ron Coleman

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4 Responses to “Sotomayor — one of us?”

  1. June 2, 2009 at 1:36 pm #

    I know you’re focused on Trademark, but no mention of Castle Rock v. Carol Publishing (955 F.Supp. 260)?

    • June 2, 2009 at 1:43 pm #

      Greg, fair enough — in fact, I do cover copyright quite a bit, but I was not in any way pretending to be thorough on this. That was a hard case requiring some tough line-drawing, and reasonable men (probably including me) definitely do disagree about where those lines were drawn — but none of those people were on the Second Circuit at the time — the Second Circuit opinion in Castle Rock, affirming then District Judge Sotomayor, is here.

  2. June 3, 2009 at 2:07 pm #

    I find Castle Rock most interesting in that it was decided on summary judgment on the close Copyright Fair Use issue and not on the Trademark issue. Given the precedent in Boston Athletic Ass’n v. Sullivan I would imagine a finding of LoC with regard to sponsorship or association would have been a more likely candidate for summary judgment. I am curious as to whether this was a decision by Sotomayor to rule on the more controversial fair use issue or had to do with the parties timing of motions.

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