10 December 2014
Most 31-year-old associates don’t get to argue at the U.S. Supreme Court, especially when they work at a firm full of veteran advocates who could pull rank and take on the assignment.
But Paul Hughes of Mayer Brown did just that on Dec. 3, appearing in a tricky trademark tacking case, Hana Financial Inc. v. Hana Bank.
He was arguing for the appellant Hana Financial and asking the justices to overturn the U.S. Court of Appeals for the Ninth Circuit, which is usually a good place to be for a lawyer seeking a win.
But by some accounts, the justices were tough on Hughes. And by one sometimes reliable measure, iSCOTUS is predicting defeat for his side. Hughes fielded 35 questions during his half-hour at the lectern, the website calculated, while his adversaries representing Hana Bank and the United States got a total of 21. Most of the time, though certainly not always, the side that gets the most questions loses.
“A few more questions came in my direction, yes,” Hughes said in an interview after the argument. But Hughes said he is “optimistic” about the outcome, though he added, “It’s hard for us to read the tea leaves.” Spoken like a veteran.
At issue was whether a judge or a jury should determine whether an older trademark can be “tacked” onto a newer version to allow the owner to retain priority status as the first to use the mark. Hughes argued for giving that task to judges as a matter of law, but several justices suggested that juries should decide the point, especially since consumer perception is a factor.
“I'd much rather blame it on the jury than on the court,” Justice Antonin Scalia said, drawing laughter.
Hughes argued that in the interest of consistency, the determination should be made by judges rather than “leaving it to simply a casebycase, jurybyjury determination.”
Hughes first connected with Mayer Brown in 2006 while a student at Yale Law School. That was the first year of Yale’s Supreme Court Advocacy Clinic, which the firm helped create. After clerking for Judge Diane Motz at the Fourth Circuit in 2008 and 2009, Hughes joined Mayer Brown and has been involved again with the clinic, but from the law firm side.
The Hana case did not, however, come to the firm through the clinic. Hughes spotted the case himself, he said. One of Hughes’ tasks at the firm is to flag circuit splits below that could turn into Supreme Court petitions. “I was able to find the case and bring it to the firm,” he said.
Veteran Mayer Brown advocate Charles Rothfeld was counsel of record for the briefing, but Hughes was heavily involved and got the nod to argue the case. “The firm has been very supportive,” Hughes said. “It’s not true of every firm, but Mayer Brown is interested in developing its young lawyers.”
While a newcomer to the Supreme Court lectern, Hughes has had four other appellate arguments this year, one each before the Federal Circuit, the Third, Fourth and Ninth Circuits. All were good preparation for the Supreme Court, especially at the Ninth, where he faced an 11-judge en banc panel. But Hughes conceded, “The Supreme Court is the Super Bowl of courts and cases.”
As intimidating as that sounds, Hughes found it a welcoming place, where the clerk’s office goes out of its way to put nervous advocates at ease.
Overall, Hughes said, “I had a wonderful time, an incredible experience. I absolutely can’t wait to do it again.”
Reprinted with permission from the 10 December 2014 edition of The National Law Journal © 2014 ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited.”