SL User Files Suit Against LL, Other Avatar for TM Infringement of SLART

Richard Minsky, Second Life artist and owner of the trademark "SLART," has sued Linden Labs, Philip Rosedale (head of LL), Mitch Kapor (head of the board for LL), and an avator named Victor Vezina, claiming trademark infringement, TM dilution, and fraud. Apparently, Victor Vezina is using the SLART trademark without Minsky's approval and after LL would do nothing to protect his mark, he filed suit. For now, Minsky's claims are just claims...but the implications about TM enforcement in SL are huge. If he can win here, what will stop all of the other companies with valid TMs from suing LL for not removing infringing material?

SLART, a Sleeping Fart

Another interesting part was LL's reaction of trying to get Minsky to drop the rights to the mark by offering perks, such as a feature in the SL magazine. LL holds the mark to SL Art, which is different enough from SLART to warrant a unique TM. They were hoping to fold Minsky's mark into their own, but he refused.

Why not make the case that the mark is generic? Many people refer to art in SL as SLART, so it seems unfair for one user to hold dominion over the word (USPTO just cannot keep up!). I know that for many, SL is their livelihood and protecting their IP there is of the utmost importance, but this seems a bit ridiculous. And, I would love to hear the justification for the $1000/day "injury"...

MDK Sues Capcom Over Dead Rising

MDK, perhaps spurred by Capcom's seeking of a declaratory judgment of non-infringement, has sued Capcom claiming that C's popular Dead Rising infringes on the copyrights and trademarks associated with Dawn Of The Dead. Capcom claimed that the scenario of Zombies attacking a mall is an "unprotectable theme". MDK cared to differ offering, "both works are dark comedies [where] the recreational activities of the zombies and absurdly grotesque 'kill scenes' provide unexpected comic relief...both works provided thoughtful social commentary on the 'mall culture' zeitgeist, in addition to serving up a sizable portion of sensationalistic violence."

MDK Sues Capcom: Sensationalistic!

I haven't played Dead Rising, but from a only-judging-a-book-by-its-cover perspecitive, Dead Rising does look a lot like Dawn of the Dead. For copyright infringement, there must be actual copying (showing this could be problematic because surely the theme of zombies being killed in suburbia has been done before). TM infringement on the other hand relies on a likelihood of confusion standard, regardless of whether the idea is copied or not. It seems like there is a great likelihood of confusion, but it will be interesting to see how the courts classify the DotD mark - probably descriptive, and therefore not warranting as much protection as a suggestive, or fanciful term (they may even claim it is generic, but I think that generic term would be something like, Zombie Movie). It seems like Capcom has admitted that there is a likelihood of confusion by including a disclaimer on the box, but then again, the disclaimer may be enough to limit or eliminate any liability.

DJ Hero Trademark Application Hints at Expanding Activision IP

Continuing with its line of "Hero" games, Activision has filed an application for a trademark for "DJ Hero." Again, a trademark application does not mean that a game is in development, only that the company is thinking about it.

DJ "Copycat" Hero

As deftly noted by 1up, this would not be the first time that a Western developer has borrowed one of Konami's Music game ideas. But then again, who ever heard of Guitar Freaks anyway?

Capcom Files Preemptive Suit Against MDK

MDK, makers of George Romero's Dawn of the Dead, have been sued preemptively by Capcom to “eliminate any doubt that [Capcom']s ‘Dead Rising’ video game does not infringe on any copyright, trademark or other intellectual property rights” owned by MKR. Apparently, MKR had already sent Capcom, Microsoft, and Best Buy attorneys a draft of a complaint, spurring Capcom into action to receive a Declaratory judgment. MKR also contacted Capcom before the game was released and claimed that it was infringing on their copyrights. Capcom claims that MKR doesn't have the exclusive right to make media associated with a human battling zombies in a mall and believes that the disclaimer on the front of Dead Rising proclaiming that is not affiliated with Dawn of the Dead is sufficient for a court to grant them a declaratory judgment of non-infringement.

Dawn of the Declaratory Judgment

For copyright infringement, it is sufficient if the expression is not lifted, but it seems like the trademark, and more specifically the trade dress, issues of Dead Rising scream "strong likelihood of confusion." I know the first time I saw the box, my first thought was Dawn of the Dead, until I read that disclaimer. Will the disclaimer be enough?

Trademark Application Hints at Apple Gaming

Apple, provider of most things cool, has filed a trademark application to secure the Apple brand for "Toys, games and playthings, namely, hand-held units for playing electronic games; hand-held units for playing video games; stand alone video game machines; electronic games other than those adapted for use with television receivers only; LCD game machines; electronic educational game machines; toys, namely battery-powered computer games." While filing a trademark application sets nothing in stone, it does show that Apple is thinking in the gaming direction.

iGame...I already want it!

As Apple pushes further into the media distribution business, it makes sense for them to be brainstorming like this --> Ars Technica makes some good points about the potential uses with the Apple TV. I am excited to see just what Apple has in store.

Buzztime Sues Sony for Trademark Violations

Buzztime, proprietor of pub trivia games, is suing Sony over its Buzz! franchise of trivia games. The suit alleges "malicous, fraudulent, knowing, willful and deliberate" trademark violations and seeks destruction of infringing products, actual and punitive damages, legal fees, and an order to not register three pending trademark applications containing the word Buzz! (one with the exclamation point and two without) filed by Sony. However, Buzztime doesn't have a trademark on the word "buzz," only on derivative marks like buzztime, buzzhead, share the buzz, and buzzkids. Buzztime claims they have some 13 million players each month.

What's All This Buzz About?

Trademark are around to protect the use of phrase, slogans, and other identifying marks in relation to specific products. Generally, the purpose of the trademark is to designate the origin of goods. Here, Buzztime is in the trivia video game business, so Sony's use of a similar mark could be infringing. However, trademark law takes into account the relation between the mark and the goods, giving four levels of classification: generic ("Computer" for a new computer), descriptive ("Holiday Inn"), suggestive ("Coppertone" for suntan lotion), or fanciful (Apple for computers). Depending on how the mark is classified, it will be granted different levels of protection. It is hard to say how the courts will classify the mark; my guess is that they will think it is descriptive. and therefore warranting little protection. However, the products are nearly identical, so there is a great likelihood of confusion. More on this as it develops...

Second Life Patent Trademark Office Opens

It is official: Second Life has its own Patent and Trademark Office. After paying a visit to this virtual PTO, it seems that it is more of a copyright registry than a patent office. The website promises real protection for virtual assets, but how it can provide real protection without using a real legal system is curious. It also hopes to provide tools to protect IP without having to resort to using those pesky lawyers!

PT...what?

The folks over at Davis make some good points about the viability of this office. It is also worth noting that these guys don't really seem to know what a patent is, or they would have called their site SLCTO, Second Life Copyright and Trademark Office. Most of the IP in SL is protected under copyright, and even if people were creating patentable inventions (which they probably are), there does not seem to be any examination process (which is necessary). Plus, in the real world, securing copyright protection is cheap and easy for those interested in pursuing it; perhaps, this site will streamline the process for the average SL user, making it even easier.

All of the I-can't-believe-this-will-work-because-I'm-a-lawyer rhetoric aside, it seems like a good idea to create a centralized repository for the innovations of Second Life, not only for viewing and record-keeping, but also to provide a dependable catalog should a "first world" dispute arise.

Virtual Worlds Day Two

Sorry for the delay folks, I know that many of you couldn't wait to get highlights from the second day, so here they are:

Keynote Address from Christian Renaud, Chief Architect of Networked Virtual Environments for Cisco: Urged the attendees to move to open standards with the purpose of propelling virtual worlds into the mainstream. He thinks that to be able to do this, the industry must allow common identities (meaning avatars that can transcend worlds to some degree), common metrics (meaning that the worlds are measured on a common scale so that consumers can differentiate between them in a useful way), common platforms (meaning namely interoperability), and common understanding (alluding to focused vision of where virtual worlds are headed). As Gary McGinty, CEO of Big Bad Wolf, said to me afterward about Renaud's speech, "The quote of the conference was, 'Do you want all of Betamaxx, or a piece of VHS?'"

Visionary Panel - Where the Platforms are Going Next - The panel consisted of Christopher Klaus (CEO, Kaneva), Michael Wilson (CEO, Makena), Raph Koster (CEO, Areae), Corey Bridges (Co-founder of Multiverse), Stephen Lawler (General Manager of Virtual Earth), Hui Xu (Founder and CEO, HiPiHi), and was moderated by Mark Wallace, blogger and co-author of Only A Game with Peter Ludlow, an excellent read: For those unacquainted with this panel, it is populated by some of the most influential people in the virtual worlds industry. The panel believes that there is great opportunity for virtual worlds growth in the areas of web integration (meaning connecting worlds to streaming media and other forms of content already available on the web) and connecting virtual worlds to social networks already in existence, such as Facebook or MySpace. The panel also concluded though that growth is not unilateral anymore and that there is potential to grow in many directions. One such area is in business models. Other possibilities for innovation included easier usability for denizens and capability for users to connect to virtual worlds online. Koster, perhaps the panel's most colorful character, was adamant that 3D was not the answer to everything online. He believes that user interface should be determined by the task at hand, and that there are some tasks on the internet that are just easier in 2D (like reading a newspaper article). He made excellent point that media outlets accrete, they do not replace (TV didn't replace radio, they both exist). Along those lines, virtual worlds are not here to replace old forms of entertainment, but can provide a new vehicle for media delivery. He also made a good point about the lack of difference between games and serious games, stating that we are all in the bookstore business, not the non-fiction aisle business.

Virtual Worlds and the Music Industry - The panel had representatives from Virtual MTV, Zwinky, and Doppelganger, the company behind V-Side: I found this to be one of the most interesting sessions at the the whole show. These three projects all work on delivering music to listeners in new and more interactive ways. Virtual worlds provide a fantastic opportunity for artists to connect with fans on a more personal level without all of the attendant risks of making public appearances. Matt Bostwick, the SVP of franchise development for MTV Music Group, previewed VLES - Virtual Lower East Side - with a machinama music video. The CEO of Doppelganger, Tim Stevens, believes that music delivery is fundamentally changing in that content must be delivered to the consumer now, not like before when listeners had to dial in, tune in, etc..

The conference had a series of lectures, but also an expo hall. In the expo hall I met David Colleen, head of Planet 9 Studios. Planet 9 is doing some interesting work creating 3D models of many of the major cities in the world. They had one particularly cool demonstration of their Virtual Earth (TM) in a GPS navigation so that the map was not a flat, nondescript 2D image, but a full 3D view of the city - very cool. Right after I finished speaking with him, I went to listen to the visionary panel, where one of the speakers was head of Microsoft's Virtual Earth (TM), Microsoft's version of Planet 9's product. Both have the same trademark on essentially the same product. I may be fresh out of school, but...

All-in-all, I would say that the conference was a success, not only for myself, but for the entire industry. They know they are on the cusp of being mainstream - give it ten years.

Manchester Cathedral Not Too Happy about Being a Level in Resistance: Fall of Man

The Church of England has threatened to sue Sony, the makers of Resistance: Fall of Man, over their use of the interior of Manchester Cathedral as a game level (apparently, the outside has been blown to bits). Set in a post-apocalyptic world, Resistance is a first-person shooter with tons of guns and video game violence that moral, upstanding folks usually object to. Church of England claims this is a violation of their copyrights (in the building, though these must have expired by now...it is pretty old) and trademarks (would any one really believe that the Church endorsed this game?), but seems to be mostly based on an equity argument (this is just morally wrong...give us an injunction). The Very Reverend Rogers Govender claimed that the game was undermining the work of the church by promoting violence and using holy places as battlegrounds.

I killed 14 of my friends in Manchester Cathedral online; it was my best game ever!

Normally the whining of the older generation about violent video games doesn't phase me much, but this particular instance does seem a bit different. Is nothing sacred any more? Once again, I suppose that is for the courts to decide. Although I do agree with Aleks Krotoski: if the church wins, do video games always have to get permission from building owners to use their buildings in games? How close the building have to actually be? What if Dan Brown had to get the permission of the church to set a Da Vinci Code scene at the Vatican - after all, he was sending a message that undermined the church.

Fall of Man, Fall of Man...clearly sinful

News Flash: Trademark Infringement Rampant in Second Life

While not big news to anybody who has set foot in the virtual realm, Virtually Blind reports on the large amount of trademark infringement taking place in Second Life each day. He calculates over $2,000,000 in transactions involving unauthorized trademark use each year, and obviously this number will continue to grow. There is a good amount of statistical information in the article as well as good reasons for companies to begin enforcing these rights.

Trademarks Shademarks

More than anything, the companies should move to protect their rights so that they do not implicitly give them up by not enforcing them. If infringement becomes common practice, it will be much harder to enforce these rights in the future. However, the dilutive effects (consumers being confused about the source of the produce) may not be severe until years from now. Will it be too late?

Piano Hero Maker Sent Cease and Desist from Activision

Nicholas Piedgon, a programmer working for Halite studios, designed an open source software package called Piano Hero, a homage to guitar hero but free. Activision, being the super-cool dudes they are, immediately sent a cease and desist letter alleging trademark infringement and dilution. Mr. Piedgon complied with the letter immediately. The following link leads to the correspondence between the two parties.

Activision sues over Guitar Hero again

Is it just me, or does Activision occupy more than half of my blog entries? Talk about being concerned with the franchise IP. Still though, I want to play some piano hero. I bet it is more productive than guitar hero since it can actually teach useful music skills as opposed to GH's dumbed-down, albeit, more fun almost playing.

Activision settles with former Guitar Hero Producers

Activision has settled its litigation against three former Guitar Hero producers. The suit alleged a whole host of IP infringements by the producers, including copyright infringement, trademark infringement, misappropriating trade secrets, breach of contract, etc.. Activision and the defendants agreed to a temporary injunction effectively prohibiting the producers from working on any rhythm-based video games for the next year.

Guitar Hero Producers suit settles

Given that these producers have teamed up with The Ant Commandoes, also a defendant in litigation involving Guitar Hero, it would seem that while this injunction is helpful, it will not effectively stop the producers from using whatever proprietary knowledge that Activision claims was improperly gained. Perhaps there was no impropriety...

See Guitar Hero Defectors Sued for a recap of the litigation when instituted

WeeWorld Tries to Back Out of Suit with Nintendo, Nintendo says Naw

WeeWorld, publishers of software used to create animated avatars for AOL instant messenger, previously sued Nintendo claiming that the Wii's Mii system violated WeeWorld's trademarks. After realizing that now is not the best time to file suit due to financial concerns and uncertainty about how a similar dispute in the UK will play out, WeeWorld wants to dismiss the current action without prejudice so the matter can be litigated at a different date. Nintendo, confident in its position, wants the suit dismissed with prejudice. They feel their case is strong and they want the matter resolved.

WeeWorld Wants Waver

I have not yet seen a case where the instigator wants to drop the suit but the accused will not let him. Judging from Nintendo's evidence that WeeWorld didn't adopt its marks until after Wii's release in the US and its fair use defense for using homonyms, I can see why Nintendo wants this case to be settled or over. Looks like WeeWorld was a wee bit too hasty...

Body Doubles in Second Life

A Second Life company ran by Persia Christensen now allows users to have famous celebs for avatars. Ever want to see Britney Spears engaged in some raw sexual act, but without K-Fed? Now you can actually be her and it is all available for the low low price of $13 dollars.

Talk About Stunt Doubles!

This mod of second life could present serious IP issues. Celebrities generally have protection over their likeness. With all of the increased attention that virtual worlds are receiving, I would not be surprised if a lawsuit is instituted quickly to protect these stars' right of publicity. Here is an analysis from Legally Blind:

Legally Blind's Take

The right of publicity is a state, common-law right. I guess it falls most near trademark law, though it seems to have aspects of copyright too - are bodies creations worthy of artistic protection? What if plastic surgery has significantly altered appearance? Does a boob job satisfy the required de minimis of creative expression? Anyway, I found the seminal case: Tiger Woods v. Jireh Publishing in my trademark book. See Legally Blind's Take for a link to the case.

Guitar Hero Defectors Sued

Activision, who I hope does not ruin their recently acquired Guitar Hero franchise, has filed suit against three former employees of Red Octane as well as The Ant Commandoes, who has already been sued once by Activision in a different Guitar Hero-related suit, and Guitar Hero PR firm, Reverb. The defectors and TAC together created a new company, Lodestone Entertainment or Hourglass Interactive. Activision is accusing the three workers of copyright infringement, trademark infringement, misappropriating trade secrets and confidential information, breach of contract, interference with contractual relations, and more. Basically, they are trying to stop these three workers from using any idea that even comes close to Guitar Hero in any subsequent games.

Activision puts franchise to good use suing people

I'm sorry Activision, but there is absolutely not one tiny shred of Metal in all this litigation. Activision is quickly becoming the Metallica of video games: stop wasting your time suing people and focus on the music.

Wargames.com Survives TM Dispute

The National Arbitration Forum just released its decision in Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead, the domain-name dispute in which the film studio tried to take Wargames.Com away from Rogers Cadenhead because it owns a trademark related to the 1983 film WarGames and the upcoming sequel WarGames 2: The Dead Code. After going through a lengthy dispute under the Uniform Domain-name Dispute Resolution Policy (UDRP...thought it seems like it should be at least the UDDRP), Cadenhead convinced the court that he was not using the trademark to profit off of the movie, but rather to sell video games. It helped that registration for the wargames mark came two years after Cadenhead had begun work on his site.

How about a nice game of chess?

The site itself seems bootleg and outdated. He hasn't begun selling any next generation war games yet. I guess those lawsuits can really tie your hands. Accordinging to Cadenhead, the UDRP grossly favors trademark holders, and as a result, usually the only winning move for a potential infringer is not to play. While my instincts tell me side with the little guy, it looks like Cadenhead has engaged in some unscrupulous domain name registering, such as benedictxvi.com and Rockyvii.com, though he claims that he had no intention of profiting off of these names and offered them to the Vatican and MGM respectively.

Here is the legal standard under the UDRP:

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

MGM satisfied (1), had a prima facie case for proving (2), but when the burden shifted to Cadenhead to prove that he had a legitimate interest in the domain name, he carried his burden and won. After deciding (2), there was no need to settle (3).

Registered Trademark leaks game title

I have finally seen the law, in practice, put to good use. While scouring the internet, some dude managed to find a listing of Sony's recently registered trademarks, discovering "Uncharted: Drake's Fortune." This title seems worthy of Naughty Dog's new game recently previewed with a trailer containing imagery associated with Sir Francis Drake. Sony will not confirm the rumors or speculation.

I knew searching the register would pay off!

Funny how of all the trademarks floating around in the industry, this is the biggest trademark story I've covered, creating its own Label.