Intellectual Property
Oct. 3, 2001
'A Law Professor's Law Professor'
SAN FRANCISCO - For someone regarded by his peers as the most influential trademark attorney in the country, University of San Francisco law professor J. Thomas McCarthy exhibits a rare modesty. He attributes his success to sheer luck.
"I'd like to say that I am prescient and that I knew back then that trademark practice would be as lucrative and prominent today as it is," McCarthy said recently. "But it was all just pure luck that my interests led me to the field."
It is no accident, however, that USF - McCarthy's employer of 34 years - decided to bank on McCarthy's name to draw national recognition to the school's intellectual property program.
By naming the law school's soon-to-be-opened intellectual property and technology law institute after McCarthy, USF officials are betting that his reputation as the nation's top trademark expert will put the school back on the map.
In the past few years, USF trailed well-publicized IP law programs at UC Berkeley's Boalt Hall, which ranked first in the U.S. News & World Report 2001 survey of the best IP programs in the country, and at the Santa Clara University School of Law, which placed eighth in the ranking.
In last year's survey, USF failed to claim a spot in the second tier of the national survey, encompassing schools ranked No. 51 to No. 90, a disappointment after having placed in the second tier in 1998.
"We want to preserve Tom's legacy and at the same time showcase it," said USF law school dean Jeffrey Brand. "We've decided to take a page out of Tom's book. We're going to advertise and package our accomplishments."
As far as brand name goes, USF could hardly have chosen a better name than McCarthy's. He is the author of the six-volume treatise, "Trademark and Unfair Competition," a series considered the definitive work on trademark law, and he has been cited in more than 1,000 judicial opinions.
His two-volume book, "The Rights of Publicity and Privacy," is the only comprehensive literature on the subject. His "McCarthy's Desk Encyclopedia of Intellectual Property" also helped cement his reputation as the pre-eminent scholar in the field.
McCarthy's influence extends to the crafting of important intellectual property legislation. As a member of the Trademark Review Commission, he helped draft the Trademark Law Revision Act of 1988, which provided key revisions to the Lanham Act, and the 1995 Restatement of the Law of Unfair Competition.
"His contribution to the development of U.S. trademark law is without parallel," said Michael Kirk, executive director of the American Intellectual Property Lawyers Association, which honored McCarthy in 1997 with its coveted Centennial Award.
"Through his book and his teaching he has influenced many lawyers, judges and lawmakers," Kirk said. "It is hard for me to even contemplate anybody who has more influence in any field of law than he does."
Such expressions of awe are not unusual among IP practitioners when one drops McCarthy's name. The phrase, "McCarthy says," appears in hundreds of trademark briefs.
Sitting cross-legged on one of several sturdy chairs he normally reserves for students in his office at USF's Kendrick Hall, McCarthy appeared more the relaxed and amiable semi-retired law professor than a venerated legal scholar. He was nonchalant about his success and reticent to discuss it.
"Of course, I am honored and flattered and I know this is the best thing that can happen to anyone and I'm very happy, but in my mind I am still me," he said.
He feels no different, he said, from the 26-year-old lawyer who first came to San Francisco in 1963 in search of the good life after graduating from the University of Michigan School of Law.
"I heard San Francisco was this wonderful place so I borrowed some money and interviewed for a job here," McCarthy said. "Fortunately, Julian Caplan offered me one, and I was able to immediately move here."
With an undergraduate degree in engineering, McCarthy hoped to practice patent law, and Caplan was one of the most prominent patent lawyers in the city at a time when the phrase 'intellectual property' had yet to be coined. Caplan's practice covered the gamut of intellectual property cases - patent, copyright and antitrust matters, plus trademark issues.
"We did a little bit of everything, and he was a great teacher and mentor," McCarthy said of his former boss. "I don't think I would be here right now if it weren't for him.
"But I always had an itch for teaching, and three years after I accepted the law firm job I heard of an opening at USF law school and applied for the position," he said.
What he intended as a two-year hiatus between law firms became a career, one which McCarthy said led him "quite accidentally' to another profession: legal writing.
The unwritten rule of "publish or perish" in academia forced him to start thinking about writing, McCarthy said, and it was his dissatisfaction at the time with the state of the literature on trademark law that got him interested in writing about the subject.
"I was frustrated at how difficult it was to do any serious legal research in trademark law," he recalled. "I couldn't find answers, and it was then that it hit me that someone should write a book on trademarks."
Initially, McCarthy planned simply to cover California trademark law. But the publisher he approached asked him instead to update an existing national trademark law book.
"It turned out the author had died and the family refused to renew the publisher's right to print the book," McCarthy said.
The two-volume work McCarthy published in 1973 was not an instant hit, he said. "I kept waiting for the phone to ring or to be asked to appear on TV. But nothing like that happened. So I was very happy when, after a year or so, I heard that a court had cited my book. I was delighted to finally learn that somebody was reading it."
A thousand or so court citations and four more volumes later, McCarthy's treatise on trademarks is regarded as the bible of intellectual property practice, said Neil Smith, a partner at Howard Rice Nemerovski Canady & Falk, McCarthy's former colleague at the now-defunct intellectual property boutique, Limbach & Limbach.
"His treatise is the most well-rounded and understandable treatise around," Smith said. "He writes the same way he thinks and talks - simply brilliant. And he does not simply write about the law; he also writes about what he thinks it ought to be."
Douglas Hendricks, the head of trademark practice at Morrison & Foerster in San Francisco, which McCarthy recently joined as of counsel, said that in his writing, as with his approach to cases, McCarthy is forthright and thorough.
"He sticks to his principles no matter who hires him to do the job," Hendricks said. "He does not change his advice just to tell you what you want to hear."
Among McCarthy's longtime clients are some of the biggest names in corporate America, ones with multibillion-dollar trademark portfolios such as Coca-Cola and McDonald's.
"I'm sure his clients value his honesty as much as his expertise," Hendricks added.
Still, "I'm a teacher first and foremost," McCarthy said. "The writing and consulting work I do in order to be a better teacher."
He's held in high regard by his students, according to Brand. McCarthy has been consistently nominated for the annual, student-sponsored Most Distinguished Professor Award and has won the title four times. Last year, the Brand Names Education Foundation awarded him its prestigious Pattishall Medal for excellence in teaching trademark law.
"If there is such a thing as a lawyer's lawyer, Tom is certainly the law professor's law professor," Brand said. "I have rarely seen such an incredible combination of talent, someone who can litigate, write and teach - and in each case at the highest possible level ."
Students who have worked closely with McCarthy have found him to be both a great teacher and an inspiring mentor. Deborah Bailey-Wells, an intellectual property partner at McCutchen Doyle Brown & Enersen in San Francisco and a former student, said McCarthy was one of the reasons she chose to specialize in intellectual property law.
"He was forever thoughtful with his students," Bailey-Wells recalled. "No question was ridiculous. You could sense his passion for his profession, and he infected his students with this passion."
Gladys Monroy, McCarthy's friend and former student and now a fellow IP lawyer at Morrison & Foerster, was attracted as a student to USF because of McCarthy.
"I was considering switching careers back then after I got my [molecular biology] doctorate, and a number of people told me to talk to Tom McCarthy," Monroy said. "I spent two hours talking to him and all I could think of was that he actually took the time to speak with me. I knew then that I wanted to study under him."
Monroy said there is no better name the law school can give to its IP center than McCarthy's. "It is very appropriate that they name the institute after the man who has been at the forefront of the IP movement, both at USF and nationally," she said.
As one of the first few IP specialists at USF, McCarthy is credited with having single-handedly built the school's IP program. He started incorporating Internet issues in his classes well before anyone knew what domain names were.
Although he plans to take a break from teaching for the next two years, McCarthy said he is determined to turn the school's IP and technology law program into a success. He will shortly be named founding executive director of the J. Thomas McCarthy Institute for Intellectual Property and Cyberlaw at USF. McCarthy will be responsible for raising funds for the institute and shaping its program.
The center will offer students an LL.M in intellectual property as well as a certificate program on the subject. The intellectual property clinic started this year by USF law professor Robert Talbot also will be under the center's umbrella.
McCarthy and the institute's executive director, associate professor David Franklyn, already have invited prominent cyberlaw and intellectual property law scholars to speak during the coming school year. The list of speakers includes Stanford cyberlaw professor Lawrence Lessig and David Nimmer, of counsel with Irell & Manella and author of the leading copyright law treatise, "Nimmer on Copyright."
"This is a big project, but it is something that has to be undertaken to ensure the future of the school," McCarthy said. "You can't really have a serious law school in the Bay Area without a strong IP program."
Despite the pride he feels in having an institute named after him, McCarthy said he would rather be remembered as someone who strove to and succeeded in demystifying the law. This is the reason, he said, why he can never retire completely from writing and teaching the law.
"It's always been my goal as a teacher, author and lawyer to make the law simple and understandable," he said. "I really believe that in a democracy, law that is not accessible is not healthy for society."
Xenia Kobylarz
For reprint rights or to order a copy of your photo:
Email
Jeremy_Ellis@dailyjournal.com
for prices.
Direct dial: 213-229-5424
Send a letter to the editor:
Email: letters@dailyjournal.com