Geekview: Cheeky Coverage of Recent Intellectual Property News

Posted by | January 19, 2013 | Geekview IP recap | No Comments


The FTC recently took Macy’s and other retailers to task for promoting bogus bamboo. According to the lawsuit filed against Macy’s, the retailer engaged in unfair and deceptive trade practices (also known as lying to sell things), as well as violations of the Textile Act and the Textile Rules. In English that means that Macy’s promoted bamboo items that were not, well, bamboo. Turns out they were rayon, which is not only less sexy sounding than bamboo, it’s also less environmentally friendly.  Rayon is a manufactured regenerated cellulose fiber, which means it is part natural and part synthetic (or semi-synthetic if you wanna be scientific). Most consumers choose bamboo because it is an “environmentally friendly” natural fiber and presumably less harmful to the natural environment. The FTC first harvested this issue back in 2009, going after 4 retailers with which it eventually settled. The FTC then released a short caution about marketing bamboo and later sent demand letters to over 70 companies instructing them to modify their marketing. Those who failed to comply found out just how big of a stick the FTC carries. And yes, it is made of bamboo. For those of you marketing “environmentally friendly products,” you should make sure you are familiar with this  FTC resource on environmental claims, as well as good advertising law counsel. Lawyers chiming in on your marketing claims might not be music to your ears, but just be grateful you’re not Vimeo . . . 

Will Vimeo be vanquished?

Can Capitol Records cripple Vimeo? Even if it does, will that curtail video file sharing? Probably not. A long, long time ago in a land far, far away, there lived something called record companies, aka record labels or “labels.” Labels bought Master recordings (masters) and sold phonograph records, or vinyl, made from them. Vinyl records were the primary means of music production for the majority of the 20th century. Then came 8-tracks, which had their heyday from the 1950s-1980s,  followed by audio cassette tapes in the 1970s-1990s, compact discs (CDs) in the 1980s-2000 and now digital downloads, which made Apple $1.1 billion(!) richer in the first three months of 2011 alone. In 1981 we began watching music videos on MTV (which actually used to stand for Music Television). With the help of iFilm we began to watch videos on the web in 1997. Nowadays, videos by pop stars like Justin Bieber get over 800,000,000 views (DO NOT CLICK!). So, what’s got the feisty folks at Capitol all up in arms? Way back in December, 2009 (seems like another decade) Capitol sued Vimeo for every flavor of copyright infringement there is: direct (you did it); contributory (you helped) and vicarious (you benefited) based on infringing videos on Vimeo’s site. The case recently heated up after Vimeo filed a summary judgment motion in November claiming protection under the safe harbor provisions of the Digital Millennium Copyright Act (DMCA). In response, Capitol (joined by a cadre of fellow labels) filed a summary judgment motion of its own, calling b.s. on Vimeo’s DMCA defense and claiming that Vimeo is guiltier than sin, especially in light of last year’s DMCA ruling in Viacom v Google. I wonder who the court will send home . . .

Holy Home Hijacking!

There’s no place like home — except the office, when you’re in litigation. So the attorneys for The Home Depot, Home Decorators, Home Decor Center and, um, Google  probably haven’t seen much of their homes recently (well maybe not the folks at Google whose litigation budget probably rivals the U.S. deficit).  Seven months ago, Home Decor Center sued The Home Depot and the others for trademark infringement (consumers were confused), unfair competition, contributory trademark infringement (you helped), vicarious trademark infringement (you benefited) and interference with prospective contractual relations (and I lost sales). According to the lawsuit, consumers who entered or clicked on a search result for that page, they would be misdirected to, which is owned by The Home Depot.  Sound familiar?  While there are some unique aspects to this case, which Prof. Eric Goldman touches on here, for the most part this is just another AdWords case. Perhaps an even less scary one for Google than its case with Rosetta Stone, given the admittedly descriptive nature of the HOME DECOR CENTER “mark,” which is federally registered only on the Supplemental Register — the waiting room for descriptive terms that hope to someday mature into marks. The Home Depot answered back in  October, as did Google (here) as the case proceeds towards its June 25, 2013 scheduled trial date. If the January 10, 2012 press release issued by Home Decor is at all representative of its case, I’d say it’s doomed.  Here’s a snippet:

[framed_box] “Home Decor Center has a legal trademark certification issued by The United States Patent and Trademark Office and owns the registered domain ‘’  . . .  and sued The Home Depot and Google in the California Superior Court for state trademark violations and unfair competition.”  [/framed_box]

I’ve no clue what a “legal trademark certification” is nor do I understand why anyone would ever sue for anything in LA Superior Court. Hopefully this one slipped by counsel and wasn’t drafted by him!

 All 3 of these cases involve liability claims against one party for the actions of another.  Make sure you — and those with whom you contract — understand and abide by IP laws when using others marks and works.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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