Hello everyone. Thanks for logging in and thanks to the SL Bar Association as well as Kate Fitz for providing respectively the space and CLE accreditation that brings us all here today. We have lots of ground to cover so I think its best that we begin…
Avatars are used in a number of ways, but more and more often avatar names are being used as designations of goods and services in virtual environments so it becomes important for us to analyze the existing structures that support their protection, namely as trademarks under both in common law and federal regimes as well as internationally under publicity and privacy statutes. As the Internet has become a common tool of trade and commerce, the use of avatar names as designations of the source of goods and services has become more commonplace. Today we’ll discuss some issues surrounding the use of avatars as graphic characters, as well as existing protection and enforcement mechanisms.
Diving right in we’ll begin with AVATAR NAMES AS DOMAINS AND THEN COMMON LAW MARKS
Lets consider SEVEN IMPORTANT ISSUES CONCERNING USE OF AVATAR NAMES AND GAINING COMMON LAW TRADEMARK STATUS
I relevant terms of service provisions
II the theory of territorial protection for common law trademarks, the traditional way of using a mark, and how marks are now being used on the Internet.
III how common law mark owners traditionally prove use, and how they would go about proving such use on the Internet.
IV the Natural Expansion Doctrine, how it is applied to common law marks, and what impact the Internet might have upon this doctrine.
V the Lanham Act, the problems that emerge when a common law mark owner can prove continuous prior use, and how the Internet might affect this issue
VI how and why common law trademark territorial rights are likely to be affected as more and more trademark owners place their marks on the Internet and finally
VII use in commerce
Lets talk about that last issue for a second. Proving a mark’s use requires showing that it has a “Zone of Actual Goodwill”—namely an area in which the mark has come to be identified with its user’s goods or services. Within this zone, courts will afford redress or relief on the grounds that a party has a valuable interest in the goodwill of their trade or business and to the extent that the trademark is adopted to maintain and extend that trade or business. When infringement occurs within that zone, it normally consists of the sale of the goods of one manufacturer or vendor for those of another.
The first subpart is the “Zone of Actual Market Penetration.” Here courts have determined that a party should be awarded ownership of a mark in a specific geographic area only when the party’s mark achieves market penetration that is significant enough to pose a real likelihood of confusion among the consumers in that area. To determine market penetration, courts will most often examine a party’s sales, advertising, and reputation in that area.
In Natural Footwear, for example, the Third Circuit considered four distinct factors to determine whether a trademark had successfully penetrated an area’s market: 1) the volume of sales of the trademarked product, 2) the growth trends (both positive and negative) in the area, 3) the number of persons actually purchasing the product in relation to the potential number of customers, and 4) the amount of product advertising in the area.
The second subpart is the “Zone of Reputation”—that is an area in which a mark’s reputation has been carried by word of mouth and/or by advertisements. This zone can also represent a protectable area for the trademark user.
In one case, for example, the Ninth Circuit suggested that it was willing to enjoin an infringing user where the legitimate user’s reputation extended into the infringer’s area at the time the infringer adopted its mark. In most instances, however, the “Zone of Reputation” will not be the sole determinative factor. Theoretically, trademark protection should not extend beyond the area of market penetration.
In contrast as a point of comparison, the amount of contact needed within a particular state to prove personal jurisdiction does not really differ from the amount of contact needed to prove market penetration. Assuming that relative quantity is not an issue, the two tests ask many of the same objective questions. In the first instance, the inquiries are made concerning the defendant party. In the other, they are made concerning the mark itself.
Since there are no cases on point regarding the market penetration of Internet marks, courts will have the opportunity to make this analogy. Chances are, they will find it quite useful. Thus, a common law trademark owner, after placing his mark on the Internet, could successfully argue that the Internet has facilitated the penetration of his mark into a particular market area. This, accordingly, helps to define his
“Zone of Market Penetration,” and in conjunction, his “Zone of Actual Goodwill.”
Theoretically, the owner of a common law Internet mark should be held to the same standard as the parties in Hanover Star. The owner should have to prove 1) continuous use of his mark, and 2) a “Zone of Actual Goodwill” where his mark has come to be identified with his goods and services. If he can do this, his mark should be enforceable in the relevant market area.
So, the owner who diligently uses his mark on the Internet (as either a domain name or on his home page) will satisfy requirement (1). In addition, that same owner who can prove substantial contacts with a particular market area (through a customer
base, advertising, and sales volume) should satisfy requirement (2). By doing both, the common law mark owner who lives in Boston, but who now places his mark on the Internet, should be protected in Springfield, as long has he has the necessary contacts there. What if those contacts were not in Springfield, but rather in Connecticut, or even Florida? Shouldn’t that common law Internet mark owner be protected in those places as well? Theoretically, there is no reason why he shouldn’t.
REVERSE TRADEMARKS (CYBERMARKS…VIRTUALMARKS)
Excerpted from Is there a second life for trademarks in second life®? by Sally m. Abel and Adrienna Wong
VI. “USE IN COMMERCE”
What Constitutes “Use in Commerce” in Virtual Worlds?
1. In Marvel v. NCSoft, the court granted NCSoft’s motion to strike Marvel’s contributory and vicarious trademark claims for failure to state a claim of infringement. The court stated that because Marvel did not allege that the game users used Marvel’s trademarks names in commerce in connection with any sale or advertising of goods and services, it failed to allege any primary infringement for which NCSoft could then be held contributorily or vicariously liable.
2. Business owners who operate their enterprises entirely within Second Life have received recognition of their marks, suggesting that a mark can be used “in commerce,” at least for services, even when all use of the mark occurs within a virtual world.
a. The Aimee Weber Avatar Trademark.
On November 11, 2008, the USPTO registered as a design mark the avatar (named Aimee Weber) that registrant Alyssa LaRoche uses in Second Life for her
virtual content creation services (Registration No. 3,531,683; registered for “computer programming services, namely content creation for virtual worlds and three dimensional platforms” (Class 42)). The “specimen of use” provided was an image of an advertisement for content creation services that appeared on a virtual billboard on a virtual building in Second Life.
b. The SexGen and DE Design Marks.
(i) The USPTO has granted trademark registration to businesses that use their mark only within Second Life, to sell virtual items. See, e.g., Eros LLC’s SexGen
mark (Registration No. 3,483,253; registered for “providing temporary use of non-downloadablesoftware for animating three – dimensional virtual characters” (Class42)); and Michael Hester’s DE Designs mark (Registration No. 3,222,158; registered for “computer graphics services; graphic art design; graphic design services; graphic illustration services for others” (Class 42)).
(ii) Through litigation, Eros has successfully obtained protection of its SexGen mark, used only in businesses conducted entirely in virtual worlds. See Eros LLC v. Leatherwood; Eros LLC v. Simon. In Eros v. Simon, each plaintiff explained its uses of its particular marks, the majority of which occurred within the virtual world:
Eros routinely promoted its products in Second Life by “placing advertisements and conducting promotional events within numerous virtual adult/social themed clubs within Second Life.”
Pixel Dolls promoted its products throughout Second Life by advertising on in-world forums and on her website. The complaint attached an image of an advertisement displaying the “PixelDolls” mark.
RH Designs used its mark to sell virtual home furnishing accent pieces, by “announcing new product offerings in-world and by internet marketing.”
DE Designs promoted its virtual clothing by “placing classified advertisements in
Second-Life-oriented publications and at various locations within Second Life.”
Le Cadre Network used its mark to sell virtual shoes and boots, “by advertising in Second Life related publications such as Second Style Magazine, on an in-world radio station owned by the Le Cadre Network, and in various Internet forums.”
Speaking of verbal trademarks used on the Internet consider the case of domains…
As soon as the domain name registry—Network Solutions Inc.—opened
its doors for business in 1993, implementing a “first come, first served” policy, parties were lined up to place trademarks on the Internet. From the beginning, a domain name was one of the easiest ways to use a mark on the Internet.
These people, pioneers they were amazingly enough, were not even the trademark owners themselves—they were pirates, who subsequently became known as “cybersquatters.”
Excerpted in part from Brian L. Berlandi, What State Am I In? Common Law
Trademarks on the Internet, 4 Mich. Telecomm. Tech. L. Rev. 105
(1998) available at .
REGISTRATION REQUIREMENTS FOR DOMAINS
“For a domain name to be registerable before the USPTO, it must be used as a trademark or service mark in a conspicuous manner that identifies the source, origin, sponsorship, or affiliation of a particular set of goods or services.” Gary W. Hamilton, Trademarks on the Internet: Confusion, Collusion, or Dilution?, 4 Tex. Intell. Prop. L.J. 1, 5 n.10 (1995)(citing INTA’s Special Bulletin: Registration of Internet Domain Names in the USPTO, (1995)).
Let’s move on to graphic character protection, AVATARS, and PUBLICITY AND IMAGE RIGHTS
The publicity right (also known as the "right to likeness") is an extension of the right to privacy, and is defined as "[t]he right to control and to choose whether and how to use an individual’s identity for commercial purposes." The statutory right to likeness should be examined in the light of its potential application in the area of massively multiplayer online role-playing games, or MMORPGs-games that "allow players to interact with each other and explore a world in real-time 3-D graphics" while "[e]very player is represented by a customizable character."
The issue at the heart of this discussion is whether players can, now or in the future, expect to have publicity rights over their avatars. Avatars not only represent a player’s physical presence in a virtual world, but are also a means of tracking and profiling individual patterns of socialization, consumption, and entertainment.
Excerpted from Protection of Graphic Characters
© Copyright 1998 Lloyd L. Rich
Therefore, what should the creators do to protect their character? Today, since the best way to protect the character is to use as broad-based a protection policy as possible, the creators should practice "overkill". This means the character should be protected by a combination of copyright, trademark and unfair competition laws.
In Warner Bros., Inc. v. American Broadcasting Cos.3 the court noted that "in determining whether a character in a second work infringes a cartoon character, courts have generally considered not only the visual resemblance but also the totality of the characters’ attributes and traits." A similar result was previously evidenced in Detective Comics, Inc. v. Bruns Publications4 where the court found that the character Superman was infringed in a competing comic book publication featuring the character Wonderman. The court found that the infringing work "appropriated the pictorial and literary details embodied in" the copyrights protecting Superman.
The more recent cartoon cases have been somewhat clearer in finding that the similarity in the graphic depiction of a character alone, without the plot elements, may be sufficient for a finding of copyright infringement, however, there still remains some uncertainty with respect to such a finding. In Walt Disney Prods. v. Air Pirates5 the infringers admitted copying the names and appearances, but placing them in very different situations than those used by Disney, of more than seventeen Disney cartoon characters for use in their adult, counter culture comic books.
The court rejected the defendant’s fair use defense, but noted that most of the previous cartoon character infringement cases "have considered the character’s personality and other traits in addition to its image". This dictum once again raised the issue of whether similarity of appearance by itself is sufficient for a finding of copyright infringement liability. However, in a number of cases where cartoon characters were reproduced as three-dimensional dolls or figures, copyright infringement was found without any regard to the issue of copying the plot or personality of the character.6 In those instances where copyright infringement was based solely on the appearance of the character, the similarity was "virtually exact".
Copyright law will find that copyright infringement has occurred when someone other than the rightful copyright owner of the character uses that character without permission, especially if such use copies the appearance and unique character traits that distinguishes the particular character.
In order to ascertain whether a graphic character is entitled to copyright protection, the courts usually apply the "character delineation" test. The critical issue in determining if such protection exists is whether the particular character is sufficiently and distinctively delineated so that it warrants protection. Because copyright law does not protect ideas from infringement, but instead only protects the expression of those ideas, courts will not protect character types. Just think about the guy who created a comic character of a kitchen sponge for hire comic as opposed to the one that created Sponge Bob Squarepants who ultimately defeated the earliers copyright claim. The best way to protect a graphic character under copyright law is to ensure that the character’s appearance and personality are specific and unique.
Protection Under Trademark and Unfair Competition
Another way to protect the graphic character, even if the character is protected by copyright, is to protect it under trademark and unfair competition law. Federal, state and common law protection will protect the character from being used by another party without authorization when the character functions as a form of identification and commands public acceptance and recognition. This protection could prevent the exact duplication of the trademark owner’s character or the imitation of that character where the likely result is to cause public confusion, mistake or deception with regard to source of the products or services that carry the indicia of the character. The scope of protection is usually only a matter of degree regardless of whether character protection arises under federal trademark law (Lanham Act), state common law of trademarks or unfair competition, or those sections of the Lanham Act that protect against false descriptions and designations of origin.
Many are of the opinion that trademark and unfair competition protection for a character is weaker than the protection provided under copyright law, but in actuality trademark and unfair competition protection may be stronger because they could provide the trademark owner with a perpetual monopoly in the use of the trademarked character. A perpetual monopoly could exist because the term of protection might last indefinitely if the use of trademarked character is properly protected and maintained. This differs from protection under the Copyright Act which will only last for a finite time as set by statute, e.g., currently if the character is owned by the individual creator the duration of copyright protection will be the creator’s life plus an additional fifty years, but if the character was created as a "work made for hire" protection would only last for seventy-five years. Furthermore, the stronger the trademark for a character becomes, the less willing the owner of the character is allowing uses of the character, such as fair use, that may be permitted under copyright law.
Trademark law will not permit a graphic character to be trademarked solely for its own protection, however, it does permit the character’s name and likeness to be trademarked when the function of that trademark is to indicate the source of the products and services bearing that mark.
Trademarks perform a number of functions that are important to the public and include: (1) identifying one’s products by permitting the trademark owner to use a mark to distinguish his/her products from those of another party, (2) signifying that all products and services that carry the mark come from one source, (3) signifying that all products and services that carry the trademark have a standard quality level, and (4) serving as the primary advertising and marketing vehicle for selling the products and services that bear the trademark.
There are both advantages and disadvantages to protecting a graphic character as a trademark, however it is my opinion that the advantages far outweigh any disadvantages. On the positive side, to obtain a trademark, a character does not have to include the originality attributes that are required under copyright law. In addition, in order to prove trademark infringement the trademark owner does not need to prove that the infringer had access to the character as is required under copyright law, but only that the mark was used by a party other than the owner of the mark without permission. Finally, the longer term of protection — potentially perpetual just as long as the registration requirements are fulfilled, the mark is not abandoned, or the mark loses its status as a trademark — especially for successful and highly marketable graphic characters, such as many of the Disney and Warner Brothers characters.
On the negative side, federal trademark protection for a character may be costly. This will be especially true if the character is extensively used or licensed for use in multiple media formats and in merchandising programs for many different categories of products and/or services. Then, protection may require that the character be registered as a mark in multiple trademark classes since each class represents a different category of goods or services, and registration in each specific trademark class requires an additional fee to be paid. In addition, because trademark protection is territorial, the mark may need to be registered in countries other than just the United States to provide the maximum degree of protection. Further, any changes in the appearance of the graphic character could destroy the original trademark protection and will therefore require additional trademark registrations to ensure that the current appearance of the graphic character remains protected.
Most courts have recognized trademark protection for graphic characters and have found trademark infringement liability under both trademark and unfair competition law. In Fisher v. Star Co.7 the cartoon characters Mutt and Jeff were protected by the court under trademark and unfair competition principles which found the Star Company liable for unauthorized use of the characters.
THE QUESTION OF MACHINIMA
THE RIGHT OF PUBLICITY
Excerpted in part from The right of publicity in virtual reality by Woodrow Barfield (2007).
The right of publicity prevents the unauthorized commercial use of an individuals name, likeness, or other recognizable aspect of ones persona. It gives an individual the exclusive right to license the use of their identity for commercial promotion. Commercial exploitation can include the use of an identity in advertising (including advertising in virtual reality or services. The scope of the right of publicity varies depending on the particular jurisdiction considering it. For example in the US, not all states have directly adopted a right of publicity law, although in many states a similar right may exist in the states privacy laws. But the right of publicity does exist in some form in Canada, Australia, Hong Kong, and members of the EU. Given that many virtual environments with corresponding avatars can be accessed by the Internet, it is possible that to be subjected to the right of publicity law within a particular jurisdiction even though the person who designed the avatar resides in a country that has no right of publicity claim. So far the right of publicity has been used to protect the persona of well-known people and not well-known avatars. In the case of White v. Samsung, the decision involved a non-human character the courts reasoning begs the question whether it is possible that someday the right of publicity doctrine could be expanded to protect a virtual avatar should the avatar gain fame, particularly when the virtual world is designed for commercial purposes.
Personal name and celebrity trademarks
In the UK celebrities, so long as requirements of sections 1,3, and 5 of the Act are met, register their names as trademarks as a personality rights mechanism. Catherine Zeta Jones registered her full name in 2002 to cover entertainment services. Britney Spears has a Community Trade Mark registration covering music recordings and a wide range of non-music areas including inflatable furniture.
Trademarks may be a more effective way to protect celebrity interests during a battle of publicity rights where the outcome may not be as predictable as the client or other interested parties would prefer.
In the official snapshot and machinima policy of Linden Labs,
(a) Land Owner Consent for Snapshots and Machinima.
If you wish to take a snapshot or capture machinima of content on another Resident’s land, then:
1.For Snapshots, check whether the covenant for the land prohibits snapshots. If it does, then you need special permission from the land owner to take the snapshot. If it allows snapshots or doesn’t address them, then you do not need special permission from the land owner as long as you comply with any terms that may be in the covenant.
2.For Machinima, check whether the covenant for the land allows machinima. If it does not or doesn’t address machinima, then you need special permission from the land owner to capture machinima. If it allows machinima, then you do not need special permission from the land owner as long as you comply with any terms that may be in the covenant.
For Mainland or Linden Homes parcels where Linden Lab is the estate owner, you do not need land owner consent to take snapshots, but you do need special permission from the land owner to capture machinima. The “land owner” is not the estate owner, but the Resident identified as the land owner in the “General” tab under “About Land.” For private islands where Residents are estate owners, you must check the covenant for the private island as provided above.
(b) Avatar Consent for Machinima.
For machinima, you must have the consent of all Residents whose avatars or Second Life names are featured or recognizable in the machinima. This includes avatars who are featured in a shot, avatars whose names are legible, and avatars whose appearance is sufficiently distinctive that they are recognizable by members of the Second Life community. Consent is not required if an avatar is not recognizable and is merely part of a crowd scene or shown in a fleeting background. Consent is not required for any snapshots.
A jurisdictional overview of the publicity rights landscape reveals that generally there are two approaches taken to towards the right at law, those protecting the image of the individual under privacy considerations and those giving a tool to public figures and celebrities to control the commercial uses of their image and name. The issue raised by the laws governing publicity in this context concern evidence. Theoretically an avatar identity could become so well known that would be possible to demonstrate fame and evidence of commercial interests of the holder to that likeness, however would that be enough? Would a court be persuaded to recognize these rights simply if evidence of fame existed, and economic interests of an actual individuals rights holder were damaged as a result of the unauthorized use of image, likeness or name?
Unauthorized exploitation of an individuals personality rights can be prevented under Section 78 of the Austrian Copyright Act. The plaintiff will be required to demonstrate that their legitimate interests are being infringed.
In Belgium “the use of a persons name for the sole purpose of publicity or any other type of exploitation without that person’s authorization constitutes a tortious act.”
“Irvine v Talksport; It is worth noting that the decision in addition to passing off was also based on the concept of false endorsement, involving implicit celebrity approval and association with the product, as distinct from mere merchandising. To that extent common law passing-off is a still less than fully secure basis for protecting image rights.”
“Passing-off” Under English law actionable passing-off requires that:
(1) the claimant has goodwill associated with his name and image;
(2) the defendant has made a misrepresentation likely to confuse the public into associating the defendant’s products or services with those of the claimant, and
(3) there is loss or the material prospect of loss to the claimant.”
Japanese courts recognise publicity as an exclusive property right, but the Supreme court of Japan ruled in 2004 that publicity rights do not apply to animals, overturning lower court rulings ordering a video game maker to compensate horse owners for using their steeds’ names in games without approval. So the owners of such non-human objects can, at least for now, only protect the names and likenesses under existing Japanese trademark, copyright and other intellectual property laws.
In BEIJING —
The names of Japanese celebrities, such as pop singer Ayumi Hamasaki, have been registered as trademarks in China by businesspeople trying to take advantage of their fame to boost business.
Japanese actors names (unfair competition claim requirement and does false designation of origin exist there? in the US its Lanham Act 43(a))
The moral concept of the image right is codified in Article 9 of the French Civil Code. This provision states that any use of an individual’s image requires their permission and has its root in the right of privacy and is therefore also protected by Article 8 of the European Convention on Human Rights.
In the Ryanair case, Carla Bruni sought 500, 000 EUR for damages that, according to her, was the commercial value of her image for visual advertising on French territory.
N. Sarkozy v. Sté Ryanair and C. Bruni Tedeschi v Sté Ryanair, TGI Paris, 5 February 2008, JCP 2008, Act. 117.
These protections do not address commercial exploitation. That has been afforded status under case law as a descendible right to control commercial use of the image of an individual without authorization.
Europe’s patchwork approach to image rights, Managing Intellectual Property (July/August 2007).
In Germany, the right to exploit ones own image is based upon the protection of the personality as a part of general civil rights. Case law has determined that images may only be distributed or made publicly available if the person shown on the image has consented to such use. Following the death of that individual, any such use requires the consent of their heirs for 10 years after the death in of the person in question. Marlene Dietrich case BGH 1 ZR 49/97 (1 December 1999).
In 2003 a Hamburg court ruled that Electronic Arts could no longer sell its FIFA World Cup 2002 game in Germany because the likeness of German goal keeper Oliver Kahn was used without his permission and not covered under negotiated licenses with the European football players’ association (FIFPRO) and the German Bundesleague.
Kahn, Oliver vs. EA Electronics Arts 324. O 381/02 Landgericht Hamburg (25.04.2003).
In Sourav Ganguly v. Tata Tea ltd, a celebrity of sorts who returned from extended time away from India to discover that Tata Tea Ltd., in which he was employed as a manager, was promoting it’s kilo tea package by offering consumers a chance to congratulate Sourav through a postcard placed in each packet of tea. The company thereby intended to promote the sale of its tea packet in the Indian market where Sourav had earned considerable amount of popularity. The court ruled in favour of Sourav by accepting that his fame and popularity is his intellectual property and ordering the tea maker to pay damages.
In conclusion, when considering virtual characters and branding activities:
1. Pay attention to trade mark use requirements in all relevant jurisdictions
2. Consider the outlook, purpose and activities of the avatar. Special care should be taken to maintain a uniform outlook of the mark, any changes to the appearance of the avatar must be seriously considered and undergone only if the intention is to re-brand.
3. When building a public figure or celebrity avatar keep in mind that an individual will ultimately be required to at least, demonstrate that use of the avatars likeness has commercial value and thus requires compensation for commercial misappropriation of the persona.
In conclusion, when considering avatars as trademarks in general:
1. The relevant terms of service agreements relating to creation and storage of the avatar as well as
2. the interest of account holders in virtual assets, such as avatars, stored on servers hosted by the service and related liability terms included in terms of service and end user license agreements and
3. any ownership of copyrightable aspects of an avatar trademark such as rights that may accrue to a body sculptor, or skin maker.
In conclusion, when considering machinima:
1. The privacy acknowledgements and waivers of all portrayed account holders and,
2. copyright clearance or licenses of intellectual property rights implicated by production of the film including those of builders and regulation of copyright ownership of avatar actor or animator performances; basically anything that may be protect able as a separate copyrighted work that is embodied in the film and
3. any trademark or publicity rights that may accrue to the individual operating the avatar relating to the commercial appropriation of their likeness and
4. copyright license terms offered by the service in connection with respect to authorizations to use and capture images in-world.
THANK YOU FOR YOUR ATTENTION.
ABOUT THE SL BAR ASSOCIATION
Welcome to the Second Life Bar Association.
The Second Life Bar Association is an organization of attorneys and others interested in the nexus of law and virtual communities.
Our mission is:
(1) to educate the public and profession concerning legal issues arising from the Second Life virtual world;
(2) to study the legal, business, and technical implications of the 3D Internet, including virtual worlds, and the Second Life virtual world in particular;
(3) to offer our members opportunities to meet and discuss the association’s interests with professionals from around the world; and
(4) to promote justice, professional excellence, and the rule of law in Second Life.
Our meetings are held upstairs on the second Saturday of each month. We also hold regular coffee chats and social events; please visit our website at slbarassn.ning.com/ for information.
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