• 19Apr

    The three-day bloggers “strike” ended yesterday, and Linden Lab issued further clarification on their new trademark policy. I wasn’t really sure what to say or how to feel about it.

    At first, I was excited. We (bloggers, whether “strikers” or not) managed to evoke a response from Linden Lab. And a seemingly sympathetic response, at that. It was a well-spun post, I’ll admit. I was suckered in for a while. I so very much wanted to believe that everything was all good now.

    But it’s not. Linden Lab has now confirmed that they are waving the banhammer threateningly at anyone who doesn’t comply. Their assurance that they will issue warnings first, reads like a sherrif from an old cowboy movie, brandishing his gun and saying, “Come along quietly, now. I don’t wanna have to shoot you, but I will if it comes to that.”

    Linden Lab has also said, in plain terms, that they will use the Terms of Service as a tool to enforce compliance both inworld and offworld:

    The Terms of Service are the conditions under which Linden Lab offers the Second Life services. One of those conditions is adherence to our trademark policy, meaning that any use of our trademarks�both inworld and outside of Second Life�must comply with our policy. (emphasis mine)

    Clearly, this is a gun aimed squarely at the Residents, since the Terms of Service doesn’t apply to anyone except Second Life users.

    And lest there be any confusion, this isn’t something that Linden Lab had to do to protect its trademark. This policy reaches beyond all logic, and beyond the requirements of U.S. trademark law. (As always, remember that IANAAL — I am not an anal-retentive lawyer. I’m just a concerned Resident with two ears and a brain between them.)

    Firstly, non-commercial use of a trademark (e.g. on a fansite such as this one) is not considered infringement under United States Code, Section 15 (a.k.a. the Lanham Act) which spells out U.S. trademark law as we know it. The Lanham act also explicitly makes an exception for “All forms of news reporting and news commentary” regarding the thing the trademark refers to; that’s why newspapers don’t have to ask permission every time they print the words “Microsoft” or “Second Life”. Whether blogs qualify as a “form of news commentary” is not legally well-defined yet, but I think there’s a strong case to be made that many blogs do, depending on what’s posted. (This post, for example, is clearly news commentary: I’m commenting on the news of Linden Lab’s policy clarification.)

    For the curious, I’ll excerpt the relevant text of the Lanham act:

    The following shall not be actionable under this section:

    (A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
    (B) Noncommercial use of a mark.
    (C) All forms of news reporting and news commentary.

    Secondly, the risk of “genericide” from bloggers referring to Second Life by name is patent nonsense: not only does it fail to dilute their trademark, it actively strengthens their trademark by establishing and reinforcing the connection between the name “Second Life” and the services offered by Linden Lab. This non-dilution is recognized under the doctrine of “nominative fair use,” which has received significant support from judges in the Ninth Circuit Court of Appeals in the time since it was first applied in 1992.

    The deciding factors for determining whether something is nominative fair use are as follows (excerpted from this PDF by Chad J. Doellinger; and also spelled out on Wikipedia for your satisfaction):

    (1) the product or service in question must be one not readily identifiable without use of the trademark;
    (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
    (3) the defendant must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder

    (And mind you, this is for commercial use of someone else’s trademark. Noncommercial use is already in the clear under the Lanham act, and doubly in the clear if it passes these tests.)

    You’ll notice that I’ve said “Second Life” quite a few times in this blog post. Am I liable for infringing and/or diluting Linden Lab’s trademark? Let’s check.

    1. Since I cannot readily identify the Second Life service or world without using the trademark “Second Life”, the first test is passed.
    2. Since I’m not going beyond the bare mininum, e.g. using the eye-in-hand logo or the font used in the Second Life trademark, the second test is passed.
    3. And since I’m not implying sponsorship or endorsement by Linden Lab (and in fact, I’m going to extra measures to expressly disavow it), the third test is passed.

    I can therefore be quite confident that a judge would find this to be nominative fair use, and thus neither infringing nor diluting the trademark. Add to that the fact that this blog is noncommercial, and that it also might qualify as a form of news commentary, and I’m in the clear under the Lanham Act, too. In other words, Linden Lab has no legal basis to object to my use of the words “Second Life” throughout this post.

    But as I mentioned above, Linden Lab’s legal department has decided to reach beyond the law, and add further constraints under the terms of service; they have decided to be bastards above and beyond the call of duty. Noncommercial use, nominative fair use, news commentary use… they don’t care about the law, they just want you to obey their nonsensical, self-destructive whims.

    Well, I’m going to continue to talk about Second Life and Linden Lab. And I’m going to call them by their names. And I’m going to continue to do all the things that I and other Residents did to give life to Second Life and get Linden Lab where they are today.

    Linden Lab can go ahead and smack me with the banhammer and send me as many baseless Cease & Desist letters as they want. The moment they do, I’ll willingly stop talking about Second Life, contributing to Second Life, or logging in to Second Life, because at that moment I would know that Linden Lab had fully deluded itself into believing Second Life can exist without a community.

    Posted by Jacek Antonelli @ 8:04 pm

10 Responses

  • Dale Innis Says:

    “Linden Lab can go ahead and smack me with the banhammer and send me as many baseless Cease & Desist letters as they want.”

    The number they’re going to want to send you is going to be zero! I agree that it’s really dumb that many perfectly non-tortious uses of LL’s marks and related signs and symbols are now TOS violations, and I do wish they’d fix that, but they are NOT going to be sending you, or Rheta, C&D letters about your nominative use. I bet Rheta dollars to donuts on this on Twitter, and I’ll gladly do it with you here. Their lawyers are for some incomprehensible reason making them reserve the right to, but in practice they ain’t gonna. Not saying that that makes it all okay, just saying that they ain’t gonna do that particular thing…

  • Aleister Kronos Says:

    Thanks – a nice and thorough explanation that even I can understand. I have to say, I was surprised at so many people shouting: “We won! We Won!” when the clarification came out. I just couldn’t see it.

    As far as I could see it made almost no difference, apart from giving assurance(?) that they won’ “ban first, negotiate later”. Where, exactly, was the victory? Let us see if good counsel prevails in the Halls of Linden, and they handle the situation with a degree of sanity. If they want to be like (most of) the rest of Corporate America – and God Knows, they seem desperate to be seen this way – then sanity will win out. To act otherwise is the path of madness. The ordure that will be heaped on the brand they naturally wish to protect would leave some very unhappy shareholders, some disillusioned potential investors and maybe a bunch of lawyers taking a long walk off a short plank.

  • Grace McDunnough Says:

    I also am not a lawyer (nor did I stay in a Holiday Inn last night) so these are my opinions and should not be construed as legal advice or counsel.

    First, I applaud you for going to the length as you did to self educate and raise awareness. Had the same been done earlier, some issue diluting mass hysteria might have been curtailed. The non-commercial use aspects of the policy have always been clear to me but as a friend pointed out, it was not made clear enough to everyone that does not deal with these issues on a regular basis.

    Second, the bitch about these types of laws and rulings is that they often encourage over reaching, so as to demonstrate that all “reasonable” means were exercised to protect trademark. It would appear that if a trademark owner allows for anything less than the law permits, they in turn relinquish rights for the future. While the earlier release of fan site kits included basic TM clauses, they were lacking any link to the ToS and were somewhat shallow. I have challenged many (none have responded) to find one service offering that does not include the trademark and termination clauses in the Terms of Use/Service policies; my argument is that it is simply common practice and does set precedence.

    This appears to me to be basic legalese clean up and one that is likely created by legal subtleties, and not an all out attack, affront or disregard for the vibrant Second Life community. I do agree the communication and delivery could have been better and more in tune with the community at large, but that is a subject for another discussion.

  • Dale Innis Says:

    P.S. and, again per the Twitter discussion, I don’t mean “more donuts than I could possibly want vs. more dollars than I have”. 100 donuts / 100 euros, maybe? :)

  • Jessyka Richard Says:

    Using their trademark in a way that doesn’t break any laws is all well and good, but because ‘the company’ (how I’ve been referring to them on my little blog) has the ability to ban any avatar for any reason they see fit, the only way to reverse that is by hiring an expensive lawyer and fighting it in court. Sure, their ban very well may be reversed after that, but the average user, like myself, has no financial means or the know-how to go about taking this to court.

    I, personally, decided to just comply, mainly out of fear my site comes up in a random Google search and they decide to ban me from ‘the world’. I have removed all references by name to the program and the company so I won’t be giving them the free advertisement they obviously don’t want.

    Just my two cents.

  • Dale Innis Says:

    Grace: “I have challenged many (none have responded) to find one service offering that does not include the trademark and termination clauses in the Terms of Use/Service policies”; I just looked through the MSN and AOL and AIM and There.com legal sections, and while most of them have both a TOS and a “here’s how we’d like you to use our marks” page, none of them seem to have the explicit tying-together that appears to make ordinary nominative use (“I like Second Life” without an (r) in sight) a violation, strictly speaking, of the TOS. They do all have, of course, “we can terminate your service whenever we feel like”. It’s that one additional thing, having the TOS explicitly say “obey our silly trademark legalese”, that seems different about the SL case. But maybe I’ve just overlooked it?

  • Coyote Says:

    It strikes me that Linden Lab is rather more exposed to the generification of their Second Life trademark than are most of their putative competitors — or at least, that notion seems to be the thrust of their protective moves here.

    It’s not hard to see that “Second Life” is a suggestive term, and it risks slipping into merely descriptive territory if they don’t watch it — especially as people become more familiar with the notion of virtual worlds in general. They don’t want to be fighting, much less losing, a battle over, say: “There.com, your second life online”.

    So while I mock their heavy-handed PR approach, I do have some sympathy for their need to circle the wagons and protect their marks proactively. They cannot really afford to state that they’re not going to enforce their marks in the face of picayune “violations”.

    I have to think that a non-commercial blog would have no trouble from them at all because, per Jacek’s notes, their mark is not imperiled by a non-rigorous reference there. A blog with a strip of GoogleAds alongside? That maybe be enough to pose a different situation entirely.

  • Kit Meredith Says:

    Hi Jacek:

    Thanks for going through all of this and giving your thoughts. Unfortunately, I am an anal-retentive lawyer. :) One thing I feel that I should point out is that the Code section you cite about what is not actionable (enumerating fair use, noncommercial use, etc.) is from 15 USC 1125(c)(4), so it only limits the enforceability of the remedy given in section 1125(c). That’s the Federal Trademark Dilution Act, and it only applies to actions for “dilution” of a “famous mark.” What we think about as garden-variety trademark infringement is actually under 1125(a), and there’s no list of exceptions like you set forth.

    The similar limitation that 1125(a) does provide is that the infringing use has to be “in commerce” for it to be actionable. I won’t give you the whole boring lecture, but unfortunately for us there’s disagreement over exactly what “use in commerce” means in that section. Yeah, I know, lawyers muck everything up.

    Anyway, I hate to correct people on their blogs, and generally I liked the post. I just wanted to make sure that we’re not giving people incorrect impressions of the law. Take care, Kit

  • Jacek Says:

    @Kit: Thanks for the clarification. When it said “The following shall not be actionable under this section”, I assumed that it meant “section” as in “Section 15 of the USC”, i.e. the entire Lanham Act. But you’re saying it only applies to the remedies in 1125(c)?

    But if I’m understanding correctly, that still means that noncommercial, news, etc. are not liable for _dilution_, even though they may be liable for infringement in some cases. Is that correct?

  • CodeBastardRedgrave.Com » Trademark Wars: Bloggers 1, Lindens 0 Says:

    [...] of the best roundup about the case IMOHO is by lurvely Cuddlefish Jacek Antonelli, speaking about it here. Many bloggers are rightfully angry about the Linden’s vague threat of banhammer for those [...]