For a lawyer who only occasionally argues an appeal the most disconcerting thing about the Supreme Court is that it is truly a court of last instance: It cannot be reversed on appeal. I never realized before my first appearance at the Supreme Court just how comforting it is in day-to-day litigation to know that, although I always want to win on every issue, there is someplace to seek a better result if things don't go my way. It had never occurred to me that I relied on this premise, but when I got to the Supreme Court, its absence loomed large. This was a sobering experience, especially at the end of a road that had until then been very successful.
THE CERT-WORTHY CASE
After a weeklong trial, my firm's client, Samara Brothers, had established to the jury's satisfaction that the defendant, WalMart, had either copied or connived in copying from Samara's line of children's clothing. On appeal, the Second Circuit upheld all of Samara's copyright claims as well most of its trade dress claims, with the result that Samara's recovery after appeal was about ninety-five percent of the district court judgment. So after a smashing victory at trial and a ruling by the Second Circuit that resulted in my client keeping almost all the money the jury had awarded, I was reasonably sure that the case was all but over.
True, the Second Circuit had split two-to-one, and the dissenter was Judge Newman--possibly the most well-respected judge on the Second Circuit bench at the time. And the adversary was Wal-Mart, which had a well-deserved reputation of never surrendering, ever, and fighting most cases to the bitter end, almost irrespective of the merits. But it is conventional wisdom that motions for rehearing are almost never granted, that the Second Circuit grants en banc rehearings about as often as the planets align, and that the Supreme Court grants certiorari even more rarely than that. So my partners and I were relatively optimistic.
Little did we know.
Wal-Mart moved for rehearing and for en banc review, as we expected. The motion was denied (also as we expected), and Wal-Mart then filed a cert petition asking the Court to hear five different issues, which amounted to pretty much all those on which Samara had won below. It seemed highly unlikely the Court would consider that sort of petition. I drafted and filed an opposition to cert, and then put the matter out of my mind.
I didn't think about the case again until the Friday before the first Monday in October, when I called the Supreme Court Clerk's office to ask how I could go about ascertaining the disposition of the cert petition once the Court convened on Monday. I was told to call on Monday at about 11:00. So I did. And I was dumbfounded when I learned that the Court had granted cert. What is more, the Court had formulated its own question that it wanted the parties to address--one that differed from those the parties had characterized as the issues in the case. (1)
I was not surprised that it was the trade dress issue that the Supreme Court wanted us to address. In retrospect, perhaps we should have realized that it was a good candidate for the Supreme Court. First, there was uncertainty in the circuits, several of which had been wrestling mightily to make sense of the Supreme Court's 1992 Two Pesos (2) decision in cases where the claimed trade dress was in the appearance of the item rather than in its packaging. They had enunciated a number of different standards that, upon analysis, seemed to me to be not that dissimilar, though each circuit formulated its standard in different language. And there had not been all that much opportunity for case law development, because only a bit over six years had elapsed between Two Pesos and the Second Circuit ruling in Samara. But the lower court cases and the scholarly commentary were increasingly noting splits of authority and differing standards, and apparently the Supreme Court took these mentions seriously. …