For Immediate Release
Yesterday, Minnesota-based law practice blog Lawyerist filed a federal lawsuit against PeerViews, Inc., parent company of New York–based law blog TechnoLawyer, to invalidate its trademarks on the terms BigLaw and SmallLaw.
Lawyerist is a leading law practice blog that offers information and related products and services to attorneys at both small and large law firms. Lawyerist publishes articles about all aspects of law practice and the legal industry, and it has published numerous articles in which the terms BigLaw and SmallLaw or the phrases big law and small law appear.
TechnoLawyer publishes nine commercial email newsletters, among them newsletters it calls BigLaw and SmallLaw. These newsletters are sent by email, although the five most-recent newsletters are available on TechnoLawyer’s website via a small Flash portal.
In February, Lawyerist published an article by Gyi Tsakalakis, Above the Law Goes Small Law, about blog Above the Law and its columns on solo and small firm law practice.
Shortly afterward, Lawyerist received a take-down notice from Fish & Richardson, PeerViews’s intellectual property law firm. Fish attorney Kristen McCallion said she was
concerned that such use will diminish our client’s goodwill in its distinctive SmallLaw trademark, and cause the public to mistakenly believe that the columns to be published by Above the Law, as well as the other publications listed . . . , may be connected or affiliated in some way with, and/or endorsed or approved by, PeerViews [TechnoLawyer’s parent company] . . . .
History of BigLaw and SmallLaw
The terms BigLaw and SmallLaw, and the related phrases big law and small law, were in widespread use by online media for many years before PeerViews registered trademarks on the terms for its email newsletters in 2010.
Examples that predate PeerViews’s trademark include the following:
- 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.”).
- Also since 2006, Legal Blog Watch: Triumph of the Competent Masochists? (“The problem is that most of us simply don’t view BigLaw partnership as worth the price.”) quoting Adam Smith, Esq.
- Since 2007, BigLawBoard.com.
- Also since 2007, Simple Justice: Take a (Salary) Hike! (“[F]irst year associates at “biglaw” are paid more than judges.”).
- Since 2008, the Wall Street Journal: Law School Rankings Reviewed to Deter ‘Gaming’ (“[A] higher U.S. News rank doesn’t always translate into better “BigLaw” job prospects.”); Fen-Phen Lawyer Trial: Gallion’s Former Associate Testifies (“For working on the Fen-Phen settlement, David Helmers — a Kentucky SmallLaw associate fresh out of law school — received a $3 million bonus, and a new car.”).
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.
Response by the blogging community
Lawyerist published the letter from Fish on February 28th, and the blogging community responded.
- In a post on her blog, MyShingle, solo practice advocate Carolyn Elefant wrote “my fellow solo and small law bloggers and lawyer-colleagues everywhere, let it be known that small law belongs to us!”
- TechDirt asked, rhetorically, “Really? I mean, really? Anyone reading the original post or just headline who isn’t a complete moron, would know that Lawyerist was using the term in a perfectly descriptive sense.”
- Above the Law, which has used similar terms for years, asked for reader input.
None of the websites who used BigLaw or SmallLaw in the past seem to have received a takedown notice from PeerViews, and it remains unclear why Lawyerist was singled out. However, the ABA Journal reached out to TechnoLawyer’s publisher, Neal Squillante, who provided a written statement that may explain why. In his statement, Squillante complained that, although TechnoLawyer apparently linked to Lawyerist every other day for two years, Lawyerist never linked back to his walled-off email newsletters.
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.
In the complaint, Lawyerist alleges that
There can be no clearer example of trademark abuse than this one, in which a business is attempting to assert trademark rights over a commonly-used term, especially because that term was used in its commonly-understood sense.