Josh Dalton and the Green Monster

One Boston attorney’s tale of defending baseball’s most famous wall

Published in 2007 Massachusetts Rising Stars — May 2007

In 1995, Josh Dalton fell in love. Of course, since this story takes place in Boston, we’re talking about the Red Sox.

As a summer associate at Bingham, Dana & Gould, he attended his first game at Fenway Park. The Utah native already knew something of Fenway’s quirky, intimate charm. But being there himself blew him away. “I was speechless the first time I walked into Fenway Park,” he says. “It gave me chills. It was electric. It’s everything they said it was.”

By 2001, Dalton was a diehard Sox fan. And, by then, he had worked four years as a litigator at Bingham, developing a specialty in intellectual property law. If 2001 was not a terrific year for the Sox––the team finished second to the Yanks in the AL East and missed the playoffs––it was for Dalton.

In May of that year, at the tender age of 28, he represented the Red Sox in a high-profile trial in U.S. District Court. At issue were the ownership rights to the nickname for Fenway’s storied left field wall: “The Green Monster.” The plaintiffs were the three D’Angelo brothers––Gus, Peter and Paul. They featured the Green Monster on cartoon-emblazoned T-shirts, which they hawked to Sox fans at Fenway.

The chance to try the Green Monster case––and to defend the beloved hometown team––before a federal court jury was a big break for Dalton. In preparing the case for trial, he had the welcome job of interviewing two of the team’s former All-Stars, Johnny Pesky and Rico Petrocelli.

During the eight-day trial Dalton examined or cross-examined eight of the 11 witnesses. The Boston Herald, The Boston Globe and The Wall Street Journal covered the case. On May 30, Dalton’s 29th birthday, the jury rendered its verdict in favor of the Red Sox. That not only removed the cloud over a valued trademark, but also cemented Dalton’s reputation as an up-and-coming IP lawyer in Massachusetts.

“From early on in Josh’s career he has demonstrated his value beyond what you might expect based on his actual years of experience, and the trial was a very good illustration of that,” says Daniel Goldberg, a Bingham partner and the lead litigation counsel in the Green Monster case. “He got very much in the thick of things, and he did a terrific job.”

In 2004 Dalton made partner at what is now Bingham McCutchen. The 6-foot-3-inch, slender Dalton has a youthful, earnest face and jet-black, wavy hair. He seems to operate on high voltage, talking fast and often restlessly knitting his fingers together or fidgeting with his gold wedding band.

He was born in Los Angeles. When he was 4 years old, his mother, Elizabeth, and adoptive father, James, relocated the family to Utah. (He has come to know his biological father only as an adult.)

His parents were “free spirits” who practiced their own brand of Zen Buddhism and ran a series of small businesses, including a retail store and some real estate development. His father managed a trailer park in the Salt Lake City suburb of Murray, where the family lived through Dalton’s high school years.

Like much of Utah, Murray was conservative and Republican, and Mormons heavily populated the area. But the Daltons were “non-members,” as the saying goes. Growing up a non-member meant being estranged, sometimes ostracized, from the “predominant culture,” Dalton remembers. It caused him to rebel. “I’m a lifelong Democrat,” he says.

As early as the fourth grade, he knew he wanted to be a lawyer: “I perceived the law as like the rules on the inside of a board game. If you knew the rules, you could succeed at the game.” A star debater at Murray High School, he won a full scholarship to the University of Utah.

He studied hard, earned bachelor’s degrees in political science and philosophy within three years and graduated summa cum laude. And he still found time to be a music critic for the school paper and start a campus chapter of Amnesty International.

Two days after his graduation, in June 1994, he married his college sweetheart, Tamara. In something of a parting gesture before he left for Boston, Dalton launched The Salt Lake People’s Press, a free newspaper to project liberal views into Salt Lake City. He, his wife and several like-minded volunteers put out a half-dozen issues of lefty discourse on such matters as gun control, abortion and the First Amendment.

From the moment that Dalton and Tamara arrived in Boston they clicked with the city. “My wife and I have said sometimes that we felt we were New England babies switched at birth. We were meant to be here,” he says. Today, they live with their three daughters, Grace, 5; Harper, 3; and Flannery, 1, in a three-story, pale-yellow house that abuts the Bristol Blake Reserve in Norfolk.

After graduating from Harvard Law School in 1997, Dalton became an associate in the litigation section at Bingham. He assumed he would work on First Amendment cases. His first assignments, however, were IP cases that involved trademarks and Internet domain names. He liked it. “I just got a bug,” he says.

Part of his baptism as an IP lawyer was representing the Japanese financial newspaper Nikkei, which claimed that online news provider Comline was copping its Japanese news blurbs and publishing them in English. Along with other Bingham lawyers, Dalton filed a trademark and copyright infringement suit in New York federal court and secured a $450,000 judgment in a bench trial.

The Green Monster case, which the D’Angelo brothers brought in 1997, presented a nettlesome scenario. The D’Angelos were young entrepreneurs from Brookline who imprinted their Green Monster designs on T-shirts––one cartoon showed a rectangular, wall-like body and a jagged-toothed head topped with light towers and netting––and sold them off a cart outside Fenway.

They started the business in 1986, eventually hustling thousands of T-shirts to Sox fans during each baseball season. Unbeknownst to the Red Sox, the D’Angelos were accidentally granted vending permits every season because they share the same name as D’Angelos clothing and memorabilia store across the street, which had been selling licensed Green Monster shirts for years, Dalton says. But in the early 1990s, the team registered the Green Monster trademark and notified the D’Angelos that they would need a trademark license to continue their business. The D’Angelos refused and filed a lawsuit against the Sox. They claimed ownership of the trademark at least for T-shirts, if not for all Green Monster items. (Just who dubbed the wall the Green Monster remains a mystery, though it’s known that the moniker appeared on the sports pages of Boston’s newspapers as far back as the late 1940s.)

In the Green Monster trial, Judge George A. O’Toole Jr. ruled that ownership of the trademark turned on the question of whether the team or the D’Angelos had used the motif on goods or services first. “Under the law, if you want to demonstrate prior use before the date of registration, you have to show it by clear and convincing evidence,” Dalton explains. “We had that hurdle.”

Petrocelli’s testimony helped Dalton clear the hurdle pertaining to T-shirts. As far back as the ’70s, when Petrocelli was playing shortstop and third base for the Red Sox, the team sold T-shirts depicting a sunglasses-wearing alligator as the Green Monster. Petrocelli remembered buying the shirts for his children. Other testimony established that the Sox had used pre-1986 Green Monster logos on such things as the team’s official programs, advertising brochures and souvenir plaques.

The idea of asking Petrocelli and other Sox legends for their autographs entered Dalton’s mind, but he staved off the temptation. He confesses: “I had this big, long rollout poster showing the Green Monster, and I thought, man, if I had brought that to the interview and had them all sign it, it would have been an amazing souvenir, but I was too shy.”

Dalton sees a bright future ahead for IP lawyers because of the ever greater proportion of service and virtual businesses in the American economy. Those trends continue to enhance the value of intangible property, although many companies do not act swiftly to safeguard their IP assets, Dalton says.

The story of the Green Monster trademark is a case in point. “Green Monster” was a Red Sox asset for decades before the team got around to registering it as a trademark.

Confident that the trademark is now secure, the Sox are taking full advantage of it. Among the prized real estate at Fenway, for example, are the new Green Monster seats perched on the left-field wall. The team has “invested more heavily in the mark,” Dalton says.

And even though he’ll likely never play an inning on the field at Fenway, Dalton says he gave the Red Sox a great defense.

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