Posted Mar 01, 2011 09:35 pm CST
Last month, the legal blog Lawyerist reported on the creation of two new columns at the blog Above the Law aimed at the small-firm world. Its headline on the post? “Above The Law Goes Small Law.”
But within 10 days of that post, Lawyerist received a take-down notice (PDF posted by Lawyerist) from Fish & Richardson on behalf of PeerViews Inc., which publishes TechnoLawyer, demanding that it either take down the “Small Law” post or revise it to remove the term “Small Law,” because Peerviews Inc. owns the SmallLaw trademark and has a weekly newsletter titled SmallLaw.
But Lawyerist, in a post Monday about the take-down notice, is “a little confused as to the confusion,” largely since it didn’t combine “SmallLaw” into one word as the trademark does.
“If there is anything that makes SmallLaw distinctive, it is the missing space,” the Lawyerist wrote. “If TechnoLawyer really thinks ‘small law’ is too-easily confused with its mark, it has a long list of cease-and-desist letters to send, given Google’s search results for ‘small law’ (from which TechnoLawyer is curiously absent).”
Blogger Carolyn Elefant wonders if she, too, will receive one of these letters. In a MyShingle post this week, she excerpts an e-mail she says she attempted to send to TechnoLawyer publisher Neil Squillante. In it, she writes that she has used the phrase “small law” for years. “My blog also has enormous visibility on all matters related to solo and small law, and frankly, the takedown letter has a chilling effect on anything that I might ever write at my blog. Will I too be subject to a take-down notice if I use the term ‘small law’ in a header?”
Squillante stands behind PeerViews’ assertions of trademark ownership and the demand to Lawyerist. “After more than two years of using the mark and building our reputation in SMALLLAW, we find it surprising that a fellow online legal publication founded by lawyers would act so lawlessly,” he said in a statement (PDF) provided to the ABA Journal. “Lawyerist’s publicity stunt attempts to conflate a narrow trademark issue about the name of an online publication with some sort of faux cause célèbre on behalf of small firms. We believe Lawyerist’s actions reflect on good versus bad Internet citizenship, not just trademark law.”
The letter from Fish & Richardson to Lawyerist, dated Feb. 24, requests that Lawyerist take action within seven days. But Lawyerist has so far not taken the post down. It decided, instead to poll its readers on whether they were confused by its use of “small law.”
“If you are confused, we’ll change the post,” Lawyerist wrote. “If not, we’ll let TechnoLawyer make the next move.”
Above the Law: “A Trademark Law Hypothetical for Intellectual Property Attorneys”
Updated at 5:04 p.m. to include related coverage from Above the Law.