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Lawyers Gratuitously Slapped For The Sake Of Marmots?

It does not happen often. Usually judicial decorum and hidebound notions of professionalism prevent it. But every once in a great while, an appellate court takes a swipe at a lawyer. No matter what a lawyer does or fails to do in arguing a case, appellate judges usually let it pass without comment. So it was a bit jarring – but nonetheless refreshing — to find Chief Judge Alex Kozinski of the Ninth Circuit upbraiding a D.C. intellectual property law firm in a recent opinion.

The case was Toyota Motor Sales v. Tabari. It seems Mr. and Ms. Tabari made a living by brokering the sale of Lexus automobiles. They practiced their trade through that series of tubes we all know so well as the Wonderful World Wide Web. Their websites were named “” and “”. Toyota wanted to stop the Tabaris from including “lexus” in their domain names. So it sued them for trademark infringement.

marmot1.jpgNow, anyone familiar with Chief Judge Kozinski’s views on the First Amendment and trademarks ought to know how this one was likely to come out. The Honorable Judge Kozinski is on record as a stalwart defender of free speech and as a guy who looks skeptically at any broad application of intellectual property rights. In an interview he gave to the libertarian magazine Reason a few years back, the Chief Judge said: “Owners of copyrights and other intellectual property rights are very grabby. They think they own everything, or they think they invented everything.”

And sure enough the opinion Judge Kozinski wrote in Toyota Motor Sales v. Tabari found that the injunction the District Court issued in Toyota’s favor had to be dissolved. The opinion held that trial judge applied the wrong law to the facts and sent the case back for a new determination.

There are several interesting aspects to the opinion, but the one that particularly caught my eye was footnote 12 that took Toyota’s counsel to task over how the right to jury trial issue had been handled. (Cast your mind way, way back to law school and the protection for the right to jury trial established in the Beacon Theatres case.) Chief Judge Kozinski said, in effect, that Toyota’s counsel went a step beyond cagey in arguing this issue:

Toyota artfully maneuvered to obscure this factual overlap [bearing on the Beacon Theatres issue] before trial and again on appeal . . . Toyota evidently hoped that the district court would not notice the careful parsing of its language, and that the Tabaris (who are defending this case pro se) would not call it to the court’s attention. Toyota is playing the same game on appeal . . . Toyota is only telling half the story by talking about only half of the relevant claims; Toyota admitted as much in its motion for summary judgment. Such selective memory exceeds the bounds of zealous advocacy.

Yes, I know Judge Kozinski softened his rebuke by using the name of the party rather than the names of the lawyers or the law firm. But the rebuke of Toyota’s counsel is unmistakable. Even this softened language was too much for Senior Circuit Judge Fernandez, who wrote a concurrence to say that “I am unable to join in the gratuitous slap at counsel for Toyota in the majority opinion, which I see as entirely unnecessary to our decision or even to the upholding of the marmoreal surface of the law.”

(Kudos to Judge Fernandez or his over-educated clerks on the use of the obscure word marmoreal. I admit I had to look it up in the dictionary. I thought at first that it might mean “of or related to the family of the hoary marmot.”)

Chief Judge Kozinski even took a sort of backhanded swing at the trial judge. Judge Kozinski’s opinion said that “many of the district court’s errors seem to be the result of unevenly-matched lawyering, as Toyota appears to have taken advantage of the fact that Tabaris appeared pro se.” I took this statement as implying that the trial judge himself was the one who was over matched. I mean, any pro se litigant who can recognize — let alone cogently argue — a Beacon Theatres issue is doing better than a lot of lawyers could do.

But Judge Kozinski had a solution for the uneven lawyering as well. In the very last sentence of the opinion, he wrote: “To avoid similar problems on remand, the district court might consider contacting members of the bar to determine if any would be willing to represent the Tabaris at a reduced rate or on a volunteer basis.”

You know, I was with the Chief Judge all the way up to the end there. I support Chief Judge Kozinski in calling out lawyers when they engage in bad or sloppy lawyering. This sort of criticism does not happen often enough. Lawyers need to know that their shortcomings and hijinks are noticed.

The last sentence of the opinion, though, just made me laugh. It is all well and good to promote pro bono service to the needy public. But, I cannot imagine a District Court Judge having nothing better to do than to hunt up a free lawyer for a car dealer who does not want to have to pay for legal counsel to defend his business. And I would think the idea of having a meddling government official (albeit a judge) step in to decide what is in the best interests of independent business owners would run against the libertarian grain.