Alumni Short

James W. Dabney '79 Argues Already v. Nike Before the Supreme Court

Washington, D.C., November 15, 2012

Only a small number of lawyers get the chance to argue a case in front of the Supreme Court of the United States, but Cornell Law alumnus and Adjunct Professor James Dabney ’79 has argued three. On November 7, Dabney argued his latest case, Already, LLC v. Nike, Inc., as counsel for the petitioner.

The Already case concerns the scope of federal court jurisdiction to hear challenges to the validity of federally registered trademarks. The specific question presented in Already is “[w]hether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.”

Dabney’s client in the Already case is a Texas-based apparel company that sells YUMS athletic shoes. In 2009, Nike sued Already, alleging trademark infringement on one of their shoe models. Dabney was Already’s defense counsel in the district court and has continued to represent Already on appeal and now in the Supreme Court, which is unusual these days, he says.

“It’s increasingly rare for trial counsel to appear as arguing counsel in the Supreme Court,” says Dabney, who is a litigation partner at Fried Frank in New York City, and head of the firm’s Intellectual Property and Technology practice group. He is also 2-0 in his prior Supreme Court appearances.

When asked about going in front of the country’s highest court, Dabney says that he feels very fortunate to have had opportunities to participate directly in the shaping of patent and trademark law. “Writing academic articles is important,” Dabney says. “But litigation provides opportunities to bring about immediate change.”

Dabney also argued Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002), which overturned case law of the Court of Appeals for the Federal Circuit concerning its appellate jurisdiction, and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), which overturned Federal Circuit precedent concerning the non-obvious subject matter condition for patentability. The Already case also involves review of a case law doctrine that originated in the Federal Circuit.

During his Already argument, Dabney repeatedly drew on IP practice experiences when answering questions from the Justices. In addition to knowing the record backward and forward, he says it is critical to be familiar with every Supreme Court case cited in the other side’s briefs. “You don’t want to be asked about a case and say you don’t recall it in that setting.” Dabney also notes that there is additional pressure arguing before the Supreme Court because so many people are watching, listening, and reporting on what is said.

Dabney teaches a course at the Law School called Selected Topics in Patent Law and Practice. According to Dabney, the course considers important assumptions that underlie much current day patent law and practice (for example, the meaning of the word “invention”) but are seldom articulated or critically analyzed. The federal registration at issue in the Already case was included in the assigned readings of his course last year.

--Andrew Clark