Trademarks in Virtual Worlds

Transcription

1 Trademarks in Virtual Worlds IPO Foundation PTO Day Washington, D.C. December 7, 2009

2 Questions What are virtual worlds? Do trademarks appear in virtual worlds? Is it trademark use? What are the goods and services? Who owns a trademark used in virtual worlds? Can a trademark be infringed or diluted by use in virtual worlds, and vice versa?

3 What are virtual worlds? Persistent computer-based simulated environment where many users interact Users represented as graphical representations, i.e. avatars Interactions are mediated by simulation rules

4 Different worlds Games e.g. Worlds of Warcraft, Eve Online, Everquest Social networking e.g., There, Habbo,Sims Online e.g. CCMetro, Nicktropolis, Club Penguin User generated e.g. Second Life Source: Dougherty & Lastowka, 25 SANTA CLARA COMPUTER & HIGH TECH. L.J. 749 (2008).

5 How do virtual worlds work? Hosted online computer platform Software grid, i.e. game engine and rendering tools Application software tool set Objects, avatars, and scripts

6 Why do trademarks appear in virtual worlds? Promotional opportunities

7 Whose trademarks appear in virtual worlds? Platform hosts and software developers Advertisers Ad agencies, designers, event organizers

8 How do trademarks appear in virtual worlds? Objects A representation of a thing in a computer simulation Landscape, vehicles, furniture, machines and clothing

9 How do trademarks appear in virtual worlds? Avatars A computer user's representation of himself/herself or alter ego in the context of a computer simulation

10 Can in-world use be trademark use? Use on or in connection with goods or services Use in commerce

11 User-generated in-world commercial activity Second Life statistics Nearly $50 million each month in user-touser transactions More than 250,000 new virtual goods created every day Source: Linden Lab, 1 Billion Hours, 1 Billion Dollars Served: Second Life Celebrates Major Milestones for Virtual Worlds (Sept. 22, 2009)

12 Virtual goods and services Downloadable virtual goods, namely, computer programs featuring {specify nature, type, e.g., articles of clothing} for use in online virtual worlds Retail store services featuring virtual goods, namely, {specify type, e.g., clothing} for use in online virtual worlds USPTO, Trademark Acceptable Identification of Goods and Services Manual (2009)

13 Virtual goods and services Entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes Entertainment services, namely, providing online, non-downloadable virtual {indicate goods} for use in virtual environments created for entertainment purposes USPTO, Trademark Acceptable Identification of Goods and Services Manual (2009)

14 Who owns a trademark used in-world? Key terms in service agreements Ownership of avatars and objects developed and used in-world Ownership of rights in platform,engines, and tools Restrictions on submission of infringing matter

15 Ownership Portability What if your brand doesn t like the virtual neighborhood? Provide support and portability obligations in branding agreements with platforms

16 Real world trademarks used in-world Real world creations can move off world into virtual world L Oreal Starwood Hotels Reuters American Outfitters

17 Real world trademarks violated in-world Grand Theft Auto and the Play Pen E.S.S. Entm t 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012, 1014 (C.D.Cal. 2006) Superhero haberdashery Marvel Enters., Inc. v. NCSoft, Corp., 74 U.S.P.Q.2d (BNA) 1303 (C.D. Cal. 2005)

18 In-world trademarks violated by in-world use Eros, LLC v. John Doe, No. 8:07-cv SCB-TGW (M.D.Fl. Filed July 3, 2007) Eros, LLC v. Simon, Civ. No. 1:07-cv SLT-JMA (E.D.N.Y. filed Oct 24,2007)

19 In-world trademarks violated by use in-world Hernandez v.internet Gaming Entertainment, Ltd., No Civ- COHN/SNOW (S.D. Fla. 2007)

20 In-world rights violated by real world use? In world creations can move off world into real world TRINGO - Kermitt Quirk - Crave Entertainment My Second Life: The video diaries of Molotov Alta - Douglas Graeton - Posted on YouTube - North American airing rights purchased by HBO

21 Questions to ponder Is unauthorized in-world use of a mark for virtual goods and services likely to cause confusion with real goods and services? Should trademark clearance consider examination of marks used in virtual commerce? Under what circumstances would in-world use of a trademark be considered expressive use that does not infringe or dilute?

22 Trends in Virtual Worlds More competition to Second Life Other web services integrating avatar, object, and scripting features MDCs working with other platforms Audience specialization Proven platform for entrepreneurs Possible value for established brands

23 Contact Mark Traphagen Washington, D.C Tel