Virginia Lawyers Weekly

Lawyers who have Web sites typically take a tip from Marketing 101: create a domain name that uses your product name. And for a lawyer, that usually involves the attorney’s own personal name.

In Northern Virginia, two lawyers with the same surname developed dueling Web sites to market their separate specialties. H. Jay Spiegel, who specializes in intellectual property from his office in Mt. Vernon, is at “SPIEGELAW.COM.” Alexandria solo practitioner Steven M. Spiegel is an employment lawyer who uses “SPIEGELLAW.COM.”

Each domain name had been registered with Network Solutions in 1999, but Jay’s site was up and running that year, while Steven created his Web site in 2008. Jay also registered his domain name as a Service Mark for provision of legal services and registered the mark with the U.S. Patent and Trademark Office.

When the two Spiegels clashed, the IP lawyer sued the employment lawyer.

On Dec. 12, Alexandria U.S. District Judge James C. Cacheris denied a preliminary injunction to shut down “SPIEGELLAW.COM.” In his decision in H. Jay Spiegel & Assoc. PC v. Spiegel (VLW 008-3-560), Cacheris said even assuming a likelihood of confusion between the two Web sites, the balance of harms test for a temporary injunction tipped toward the labor lawyer.

Cacheris acknowledged that the competing site could “leach some portion” of the goodwill the IP lawyer had built up over the eight years he used “SPIEGELAW.COM” to promote his international practice. Particularly if following oral instructions, an Internet user seeking one lawyer easily could wind up at the Web site of the other.

Or, the court said, a client could wind up at yet another solo practitioner’s site – “SPIEGEL-LAW.COM,” which describes California lawyer Yasmin Spiegel’s collaborative family law practice.

A potential patent client would quickly realize he located the wrong attorney if he first found the employment lawyer’s site, according to the court.

The online presence of the defendant lawyer “does not pose a wholly novel threat to the ability of potential clients to locate Plaintiff’s Website,” Cacheris said.

Shutting down his site would impair the employment lawyer’s ability to represent clients, the employment lawyer argued, because he uses the site in his capacity as class counsel in a civil rights class action lawsuit. He told the court that through his Web site, he is able to share information and communicate with members of the class.

The continued existence of the “similar-sounding but discrete Internet domain name” during the pendency of the litigation would not significantly impair the patent lawyer’s goodwill, Cacheris said.

But “[d]isrupting a major line of communication and information sharing between class counsel and a class of plaintiffs” who may be spread around the country and never meet their attorney in person “poses a real threat” to counsel’s ability to advocate effectively, the judge said.

Cacheris denied the injunction, saying the plaintiff lawyer had not shown a “strong likelihood of success” on his trademark infringement and unfair competition claims.

The case is moving forward, according to both Spiegels, with discovery having been served and a scheduling conference set for the first week in January.

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