Earlier this month, we presented you with a trademark law hypothetical. It was based on a dispute between Lawyerist and PeerViews Inc., parent company of TechnoLawyer, over the term “Small Law.” Lawyerist used the words “Small Law” in the title and text of this post — about Above the Law’s new offerings for small-firm readers, incidentally — and PeerViews objected.
In a letter by Kristen McCallion of Fish & Richardson, PeerViews expressed the concern that Lawyerist’s use of the words “Small Law” would diminish PeerViews’s goodwill in its “distinctive SmallLaw trademark.” PeerViews uses the mark for the TechnoLawyer newsletter on small firms.
We asked you, our readers, for your opinions on this matter. In the comments to our post, most of you sided with Lawyerist (but there were a handful of very vocal dissenters).
How will a judge or jury feel about this dispute? Because that’s who will get the next crack at this controversy. Lawyerist Media just filed a lawsuit against PeerViews in federal district court in Minnesota, seeking to invalidate the PeerViews trademarks on the terms “BigLaw” and “SmallLaw”….
You can read all about the lawsuit over at Lawyerist. This will probably be a fun case to cover, thanks to the colorful characters involved. Lawyerist is represented by Sam Glover of the Glover Law Firm, as local counsel, and noted First Amendment attorney Marc Randazza, who writes the (most excellent) Legal Satyricon blog.
The Lawyerist complaint (PDF) contains a lengthy listing of uses of the terms “BigLaw” / “Big Law” / “SmallLaw” / “Small Law” that predate the PeerViews trademark registration. Here are some examples:
- Since 2000, the New York Times: I Am Lawyer, Hear Me Whine (“If BIGLAW DC does not react with major raises, I guarantee you that BIGLAW DC will face a brain drain.”).
- Since 2004, Crime and Federalism: Dollars and deals (“A [sic] ex-law professor of mine said that his large Los Angeles law firm allowed its associates to work, for 6-weeks at full BigLaw pay, for the LA County DA’s office.”).
- Since 2006, Above the Law: SmallLaw Reversed Perk Watch: Don’t cry over the Kleenex; Another Judge Leaves for Greener Pastures (“Sounds like the transition to Biglaw partner will be pretty easy for Mukasey.”).
Additional examples are listed over at Lawyerist, which contends:
The terms BigLaw and SmallLaw and the phrases big law and small law belong to the public; nobody owns these terms anymore than a company could claim a trademark on a phrase like big business….
To protect its right to use BigLaw, big law, SmallLaw, and small law, as well as the right of the public and the blogging community, to use those terms without fear of reprisal, Lawyerist sued PeerViews to invalidate its trademarks.
Lawyerist also asked for a declaration in Minnesota federal court that its use of the phrase small law did not infringe on PeerViews’s SmallLaw trademark.
We will follow this case with great interest — in case you haven’t noticed, we use the term “Biglaw” quite frequently in these pages — and we will keep you posted. In the meantime, check out the complaint here (PDF), and debate the case in the comments. (Maybe you can offer analysis that will be helpful to Fish & Richardson, counsel to PeerViews, as they try to protect these marks.)
(Random aside to assuage the fears of that law student commenter who emailed us a while ago: arguing anonymously about legal issues in the comments section of a website is very unlikely to result in you being dragged before a legal ethics tribunal for unauthorized practice of law.)