Posted Mar 22, 2011 07:50 pm CDT
Law practice blog Lawyerist filed a lawsuit in Minnesota federal court Monday against Peerviews Inc., which publishes the blog TechnoLawyer and a number of email newsletters, to invalidate its trademarks on the terms “BigLaw” and “SmallLaw.”
On Feb. 24, Fish & Richardson sent the Lawyerist blog a take-down notice on behalf of Peerviews over Lawyerist’s use of ‘Small Law’ in the headline of a Feb. 15 post, demanding that it either take the post down or revise it to remove the term “Small Law,” because Peerviews Inc. owns the “SmallLaw” trademark and has a weekly newsletter titled “SmallLaw.” The notice told the blog to remove or alter the post within seven days, but the Feb. 15 post remains unaltered on the site.
Lawyerist’s lawsuit states that the terms “SmallLaw” and “BigLaw” are descriptive to the point of being generic and under the Lanham Act should not have been registered as enforceable trademarks. The suit goes on to list seven other publications and legal blogs that have used the terms “BigLaw or “SmallLaw.”
Lawyerist is asking the court for a declaration that its use of “small law” did not infringe on Peerviews’ trademark; for the cancellations of the “SmallLaw” and “BigLaw” trademarks, and litigation costs and attorney fees.
TechnoLawyer publisher Neil Squillante declined to comment on the lawsuit.
Lawyerist is represented by Sam Glover (Lawyerist’s editor-in-chief) of the Minneapolis-based Glover Law Firm and Marc J. Randazza (who also blogs at the Legal Satyricon) of the San Diego-based Randazza Law Group.
“As an intellectual property attorney, I respect companies’ rights to protect their reasonable IP assets,” Randazza told the ABA Journal. “As a First Amendment attorney, I am displeased when I see IP rights misused in a way that could stifle speech and competition. I believe that TechnoLawyer overreached with its registrations and its legal threats, and that this case will help restore the balance that belongs between IP and free expression rights—at least in this humble case.”