Legal Bytes : Advertising & Media Lawyer & Attorney : Reed Smith Law Firm : Marketing & Intellectual Property : Legal Bytes Law Blog

Copyright Infringements on Social Media Services

The question of whether the use of third-party content protected by copyright by a user on a social media site constitutes copyright infringement can be answered in a fairly straightforward way. If there is no consent by the right holder, such use will inevitably constitute an illegal act of making the work available to the public under most modern copyright regimes. Most operators of social media services provide in their terms of use that the user is responsible for making sure that material provided by him on the service does not infringe third-party copyrights. As has been discussed above, the interesting question then becomes whether the operator of the service can be held liable and can be asked to stop the infringement quickly, particularly in situations in which the identity of the infringer (the user) is difficult to establish or the infringer is located in a faraway country.

Conversely, however, one can ask whether content legitimately created by users of social media services enjoys copyright protection itself. If this is indeed the case one may wonder to what extent the operator of the service or other third parties may be allowed to refer to, cite or otherwise make use of such content.

Twitter

With respect to tweets, which by definition can be no longer than 140 characters, one may doubt whether they will be sufficiently creative and original to enjoy copyright protection. In many cases, tweets will only consist of short regular phrases that may not be regarded as an original work of authorship in the U.S. sense,[6] an original work in the UK sense[7], or a personal intellectual creation as required under German copyright law.[8] Consequently, in many cases, none of the three regimes will provide copyright protection to tweets.

To the extent Twitter states in its terms of use:

You retain your rights to any Content you submit, post or display on or through the Services.

this should actually be qualified by indicating that in most cases, tweets will be in the public domain for lack of originality or creativeness. It is not impossible, however, to create short poems or other brief literary works with no more than 140 characters. If originality and creativity can be established, the situation would be different. The analysis would also be different for longer original works broken down into sequences of tweets and made available on Twitter one by one—such as a short story published on Twitter in small bits of no more than 140 characters each, provided the single tweet enjoys protection on its own.

If a tweet or parts of a tweet can be found to be protected by copyright, the use of the respective content by third parties can constitute copyright infringement if fair use (United States), fair dealing (UK), or a similar exception under the respective applicable domestic copyright regime cannot be established. There is no rule, either, under U.S. or European copyright regimes requiring that in order to infringe a literary work, passages of a certain length need to be copied, provided the sequence used enjoys copyright protection as such.

As a consequence, so‑called retweeting, (i.e., repeating somebody else's tweet under one's own user name) may constitute copyright infringement as well, provided the earlier tweet is sufficiently original and creative to be protected. Citation exceptions provided[9] may not help in this context as mere repeating of an entire text without incorporating it into one’s own original work does not constitute citation.

Facebook, MySpace, et al.

The limitations existing with Twitter with regard to the number of characters do not exist on other social media services such as Facebook and MySpace, among others. The further possibility to upload photographs and/or audiovisual content onto such services leaves no doubt as to the possibility of copyright infringement if third parties copy or otherwise make relevant use without permission of materials taken from somebody’s page on Facebook or a similar site.

Terms of Use and Applicable Law for Copyright Law Purposes

Most social media services have terms of use providing for comprehensive non-exclusive copyright licences granted by users to the operator. Typically, such terms of use also provide for U.S. law in the state in which the service is based. Twitter, for example, provides the following in its terms of use:

These terms and any action related thereto will be governed by the laws of the State of California without regard to or application of its conflict of law provisions or your state or country of residence. All claims, legal proceedings, or litigation arising in connection with the service will be brought solely in San Francisco County, California, and you consent to the jurisdiction of and venue in such courts and waive any objection as to inconvenient forum.

While such terms, if they have been validly made the object of the agreement between the user and the operator of the social media service, may apply for general purposes of international law of contracts, the question needs to be asked whether for purposes of copyright law such a choice of law and venue clause will make all foreign copyright regimes inapplicable.

From a European perspective the answer is clearly: no. According to European case law (and the view of leading European scholars), the posting to social media services of works by users in Europe is governed by the copyright laws of the particular European country in which the user resides, regardless of the contractual regime agreed to in the terms of use. This may be surprising, but it needs to be taken into account, particularly in connection with copyright regimes providing for increased protection for copyright owners, such as under German copyright law.

Moral rights, compulsory remuneration rights, legal limitations on the scope of copyright licences and the prohibition of assignments of copyright provided in the German Copyright Act, for example, will all continue to apply for the benefit of a German right holder or with respect to uses in Germany, even if the operator of the social media service provides for California law. Companies are well advised, therefore, not to be misled into believing that simple choice-of-law clauses, even if they have been validly agreed, will enable them to avoid the much stricter and much more pro-author provisions in certain European copyright regimes, compared with what the U.S. Copyright Act provides.

Music Licensing Issues

In dealing with the copyright issues faced by U.S. companies engaging with social media in the U.S. market, we did not mention an issue that looms large for European and multi-national companies operating within Europe. If a company wishes to enliven its web-presence by using music, the rights-clearance arrangements that will be needed are very different if the company is operating in Europe rather than in the United States. A U.S. company can usually clear rights for the U.S. market by means of obtaining two or, at most, three licences, from the music rights societies and from the record company concerned. To reach the whole of the EU market, a multiplicity of licences will be needed, in many cases covering only a single country at a time. Only for a very small number of works is it possible to obtain European-wide clearance by means of two or three licences; choose the wrong work and you could be looking at having to obtain 30 or more licences.

Bottom Line—What You Need to Do

Police your own copyrights and be mindful of copyright protection that may exist for content provided by others. Be aware of the fact that the international nature of global social media services requires that you not only rely on one domestic or one contractually agreed regime, but that you also keep an eye on foreign laws involved with users based abroad.

When clearing rights for using content yourself, be aware of the international scope of the intended use as well, and make sure that you truly obtain sufficient geographic rights for the intended use.

If you operate a site enabling users to upload content, put in place a procedure allowing you to remove, as swiftly as possible, evidently infringing material or material of which you have been told that it is infringing.

Social Media in Action in Trademarks

Trademark, Service Mark and Trade Name Infringement

Twitter, Facebook, and virtual worlds such as Second Life, to name a few, allow their members to adopt user names, personalised sub-domain names, virtual products, and avatars, which all create confusion as to source. There is little resolve to prevent an individual or entity from adopting a user name or sub-domain name that incorporates another’s trademark or personal name. Nor has the law caught up with issues involving the “sale” of virtual products that bear trademarks owned by another or the creation of avatars that resemble celebrities.

Twitter

Twitter, a social networking service that allows users to send and read posts of up to 140 characters in length (“tweets”) has experienced meteoric growth since its launch in July 2006, with almost 75 million visitors in January 2010 alone.[1] Think about the marketing opportunities; now, think about how many people could be deceived by trademark infringers and impersonators. Upon joining Twitter, members create a username which is the “identity” through which their tweets are sent and received. A recurring issue is a member registering a username that is the trademark of another or a name belonging to a celebrity.

In September 2009, ONEOK, Inc. sued Twitter for trademark ifnfringement, alleging that the company wrongfully allowed a third party to adopt the username “ONEOK,” its company trademark, from which the unnamed third party tweeted information about the natural gas distributor.[2] The complaint alleged that the messages were misleading in that they were made to appear like official statements from ONEOK when, in fact, the company had no involvement in sending them. Over the course of a month, ONEOK unsuccessfully asked that Twitter terminate or transfer the unauthorised account. After the complaint was filed, however, the parties resolved the dispute and the account has since been transferred to the company.

A more complex situation arose for Vodafone, whose UK Twitter account was hijacked internally (with a tweet we cannot reproduce here for reasons of taste) by a (presumably now ex) employee[3].

If the Vodafone case proves that companies must have robust internal policies on consumer-facing social network activity, third-party “Twitterjacking” is less easily dealt with. Twitter does have a trademark policy in place that provides the following:

Using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others or be used for financial gain may be considered trademark infringement. Accounts with clear INTENT to mislead others will be immediately suspended; even if there is no trademark infringement, attempts to mislead others are tantamount to business impersonation.[4]

And while Twitter provides such a policy, it is unclear how well-developed a plan it has for dealing with trademark infringement or how well it is enforced. As a result, it remains the trademark owner’s obligation to be hands-on about protecting its rights. Strategy in doing do so may include developing a standard as to what you may deem to be objectionable use of your trademark, using the privacy protection put in place by the social network to the best of your advantage, and, if feasible, proactively adopting any username variants of the mark you are seeking to protect, a tactic proffered by Facebook as discussed below:

Facebook

Facebook has more than 400 million active users, allowing its members to connect with others, upload photos, and share Internet links and videos. A recent Compete.com study ranked Facebook as the most-used social network by worldwide monthly active users.[5]

Like Twitter, it too, has found itself defending claims of trademark infringement. Facebook, likewise, has an intellectual property infringement policy; however, Facebook’s enforcement of this policy has been called into question.[6] The policy provides that:

Facebook is committed to protecting the intellectual property of third parties. On this page, rights holders will find information regarding how to report copyright and other intellectual property infringements by users posting content on our website, and answers to some frequently asked questions regarding our policies.[7]

Facebook also reserves its right to remove or reclaim a username upon complaint by a trademark owner.[8]

With respect to trademark infringement, it is unclear whether pending trademark applications and/or common law rights will be sufficient to bring a claim, or if the challenger must own a registered trademark. The question of jurisdiction is also unclear. If a Community Trade Mark (CTM) is registered in Europe, to what extent will a claim citing infringement by a U.S. user hold water? How will Facebook handle claims by multiple parties claiming rights in the same mark? Only time will tell.[9]

In its own effort to combat trademark infringement and name-squatting, Facebook, in conjunction with its new policy of allowing users to create personalised URLs, has implemented the following procedures:

• Trademark owners were provided with a three-day window to record their registered trademarks with Facebook, rendering those names unavailable to third-party users, and allowing the trademark owners the opportunity to register for and use those names themselves at a later date.
• Usernames cannot be changed and are non-transferable. As a result, a username cannot be sold, and, should a user terminate his/her account, the username will become permanently unavailable.
• Only a single username may be chosen for each profile and for each of the pages that a user administers.
• In an effort to prevent a user from monopolising a commercially desirable term, generic words may not be registered as a username.

Though these efforts can help provide some comfort to trademark owners, it is unfeasible to protect any and all variations in the spelling of a mark or use of a mark with a generic term (e.g., “cartierwatches”). Furthermore, it remains uncertain whether Facebook, under its current trademark infringement policy, will only stop uses of exact marks. Moreover, will use of the mark as only a username be enough to enact the policy, or must there be infringing content on the Facebook page, or even commercial content on the page?

Another limitation is that common law and other unregistered rights to names under domestic laws (whether in the United States, the UK or continental Europe) are not part of this policy. In other words: If a trademark is not registered, a brand owner cannot automatically prohibit its use as a Facebook URL.

Perhaps Facebook should adopt a model similar to that of the Uniform Domain-Name Resolution Policy (“UDRP”) used to help resolve cybersquatting and other domain name disputes. The UDRP offers trademark owners the ability to acquire or cancel a domain name registration if they can prove that: (1) the domain name at issue is confusingly similar to the owner’s trademark; (2) the current owner of the domain name has no right or legitimate interest in the domain name; and (3) the current owner has registered and is using the domain name in bad faith. The decision as to whether the current domain name holder gets to maintain his/her registration or whether the domain name is to be transferred or cancelled, is rendered by a neutral panel. Certainly providing a uniform set of rules could only serve to help trademark owners in protecting their marks. Not only may such policy help to avoid costly litigation, but decisions can also be rendered fairly quickly.

While privacy protection policies provided by social media sites may help to alleviate some concerns, trademark owners can pursue other legal avenues should these policies fall short. As evidenced by the ONEOK case discussed above, filing an action for trademark infringement or unfair competition are options to protect a valuable trademark.

What Constitutes Infringement?

In the United States, the Lanham Act provides that one is liable for trademark infringement if he or she “use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive…”[10] Similar “use in commerce” requirements exist for claims of unfair competition[11] and dilution.[12] However, the success of any such claims depends on the definition of “use in commerce.” Does a defendant have to use the social media site to sell goods or services in order to avail the trademark owner a claim for relief under the Lanham Act? Unfortunately, this question has yet to be answered definitively, though application of the Lanham Act will certainly depend on the level of commercialisation.

Under English law, as generally under trademark laws in the member states of the European Union that are harmonised under the EU Trademark Directive,[13] trademark infringement occurs where a registered trademark is used without the owner’s consent, and:

• The sign used by the infringer is identical to the registered trademark and is used in relation to identical goods or services
• The sign is identical to the registered trademark and is used in relation to similar goods and services
• The sign is similar to the registered trademark and is used in relation to identical or similar goods or services, and there is a likelihood of confusion by the public, or
• The sign is identical or similar to the registered trademark, the trademark has a reputation domestically, and the use of the sign takes unfair advantage of, or is detrimental to the distinctive character of, the trademark[14]

Under European Community trademark law, the CTM Regulation[15] provides the proprietor of a CTM with the right to prevent third parties from using:

• A sign that is identical to the CTM in relation to identical goods or services, or
• A sign identical or similar to the CTM in relation to identical or similar goods or services if there exists a likelihood of confusion by the public.

The European Court of Justice (ECJ) has held[16] that mere adoption of a company name does not constitute trademark infringement. The test used by the ECJ was that the use of the sign must affect the mark’s essential function of guaranteeing source. It is likely that the adoption by a third party of a name in a social media context will pass this test, though each case will depend on its facts. If use of the company name in a social media context is made in a way that clearly indicates that the use does not originate from the company itself (e.g., a username such as “BMWcritic), infringement will likely not be found.

The English courts have also addressed the question of jurisdiction.[17] In the 1-800 Flowers case, it was held that for trademark law purposes, website-use did not constitute use everywhere in the world merely because the site is globally accessible. Key factors to determining infringement were held to be the intention of the website operator and what local users understand upon accessing the site. Applying this test to Facebook, Bebo or MySpace could result in different decisions depending on geographical coverage and demographic reach. Decisions in other European countries, such as Germany,[18] have used the same approach and asked whether the website-use is directed at the respective domestic customers or audience.

Unfair Competition/Passing Off

In English law, companies can use the tort of passing off to protect their brands. A company looking to protect its name, mark or get-up must establish goodwill, misrepresentation and damage to successfully argue passing off.

While an action for trademark infringement can only be brought in relation to a registered trademark, the cause of action in passing off is wider and protects all elements by which a claimant’s business can be identified. That said, passing off is narrower in scope and harder to prove than the law of “unfair competition” in the United States. While the tort of passing off has not yet been tested in a social media context, there is no reason for it not to apply, albeit that it might be difficult to prove damage in this context. If this is the case, a claimant can instead rely on an argument based around erosion of goodwill, which has previously been successful in the English courts, if the claimant’s brand exclusivity has been reduced, blurred or diminished.[19]

While unfair competition law is not harmonised within the European Union to the same degree as trademark law, other countries offer similar (albeit not identical) remedies to passing off. In Germany, for example, the imitation of goods or services of a company leading to an avoidable confusion among consumers as to commercial origin, or unjustly exploiting or impairing the goodwill connected to the imitated goods or services, constitutes unfair competition.[20] The one case decided by German Courts in this context did not concern an individual use within a social media context, but rather an alleged imitation of the look and feel of Facebook by the German site StudiVZ.[21]

Impersonation

Social media websites such as Twitter and Facebook have also encountered problems with impersonation, an issue particularly prevalent with respect to celebrities. Twitter has even adopted an impersonation policy that states:

Impersonation is pretending to be another person or business as entertainment or in order to deceive.

Non-parody impersonation is a violation of the Twitter Rules.

The standard for defining parody is “would a reasonable person be aware that it’s a joke?” An account may be guilty of impersonation if it confuses or misleads others—accounts with the clear INTENT to confuse or mislead will be permanently suspended.[22]

Twitter will allow a parody impersonation to exist if the following criteria are met:

The profile information on a parody account is subject to removal from Twitter.com if it’s not evident from viewing the profile that it is a joke, it is considered non-parody impersonation. Non-parody impersonation accounts may be permanently suspended.[23]

Nevertheless, countless celebrities have fallen victim to imposters who have acquired usernames of well-known personalities, including Britney Spears, Peyton Manning, William Shatner, the Dalai Lama and even the Queen.[24]The landmark case that brought this issue to light involved St. Louis Cardinals Manager Tony La Russa, who sued Twitter for trademark infringement for allowing an impersonator to send unauthorised and offensive messages under his name.[25] Specifically, he claimed that the unauthorised user made light of the deaths of two Cardinals pitchers, and the public was duped into believing that these statements were made by La Russa. The case settled in June 2009.

Cases like this beg the question as to how well trademark owners can rely on social media websites to shut down imposters, even in light of such matters being brought to their direct attention. In the UK, the advent of personalised URLs may allow trademark owners to rely on English case law, which has held that use of a domain name can infringe a registered trade mark. In Germany, the courts are at least as generous, and have not only viewed the use of a domain as infringing trademark rights, but also as infringing rights to personal and company names.[26]

In an effort to address such concerns, Twitter has created verified accounts, a currently experimental feature, which is a tool developed to help establish the authenticity of those individuals who encounter impersonation or who identity confusion on a regular basis. An account that is verified indicates that Twitter has been in contact with the person or entity the account is representing, and has verified that it is approved. However, the drafter of the tweets sent from the account is not necessarily confirmed. They note that only a handful of accounts have been verified to date (and this feature is not being tested with businesses), so accounts that do not bear the “Verified Account” badge are not necessarily fake. According to Twitter’s website:

We’re starting with well-known accounts that have had problems with impersonation or identity confusion. (For example, well-known artists, athletes, actors, public officials, and public agencies). We may verify more accounts in the future, but because of the cost and time required, we’re only testing this feature with a small set of folks for the time being. As the test progresses we may be able to expand this test to more accounts over the next several months.[27]

While acknowledging that it will not be verifying all accounts, Twitter claims that it will try to assist you if your account is constantly competing with parody or impersonation accounts. Despite these efforts, it is clear that there is quite a long way to go before impersonation and identity confusion can be dealt with effectively. Ironically, many famous celebrities delegate the use of their Twitter account to their publicist or manager.

Virtual Worlds

Virtual worlds are another emerging area of unease. Developed through the application of user-generated content, members create avatars that exist in an online world. Second Life, one such 3-D virtual world where users can socialise, connect and create using voice and text chat, also allows users to create virtual products for sale online, using online currency to complete the transaction that is purchased with real world currency. Habbo is another example, only with a broader reach and targeted to a teen and pre-teen audience.

Trademark Infringement

Too often the virtual products offered for sale on virtual worlds bear the trademarks of third parties without permission to do so. By way of example, in the United States, Taser International, Inc. filed a trademark infringement claim against Second Life over the sale of unauthorised virtual versions of its electronic stun guns.[28] The lawsuit was later dropped, but the liability of Linden Lab, creator of Second Life, was debated in the media.[29] One question raised was why Linden Lab could not have been protected under the safe harbor provisions of the DMCA (See Chapter 1 – Advertising) or the CDA (See Chapter 2 – Commercial Litigation). After all, Linden Lab does not manufacture or sell stun guns, but merely provides the platform through which these “products” are offered for sale. The reason is because trademark infringement claims, unlike copyright claims, for example, are not covered by the DMCA or the CDA. Still, if one were to follow the logic of these statutes, it would seem that the creator of the product bearing the unauthorised trademark should be held liable, not the party who merely provided the platform. In Europe, the E-Commerce Directive makes no such distinction. Thus, virtual world operators might seek to rely on the argument that they are mere conduits, expeditiously removing infringing content when put on notice. Equally, brands that are struggling to find recourse in the United States may find solace in Europe.

A further question is whether such use of another’s trademark, in fact, amounts to trademark infringement. After all, these unauthorised products are not actually offered for sale in the real world, only online. However, several trademark owners have actively promoted the use of their products on Second Life, including International Business Machines Corp. and Xerox Inc.[30] Therefore, there is reason to believe that a stun gun bearing the Taser trademark, was, in fact, endorsed by Taser International Inc. As such, it would seem that it is in the trademark owner’s best interest to police its mark to the best of its ability in order to avoid any possible confusion with respect to source or association. Further, you want to avoid a slippery slope, wherein allowing wrongful use of one’s intellectual property in the virtual world leads to even greater harm in the real world.

In the European Union, the ECJ found that use of a trademark protected for toys on a toy replica of a car will constitute trademark infringement only if that use affects or is liable to affect the functions of the trademark, or if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.[31] In the Adam Opel case, which followed a preliminary ruling from a German court, the German courts ultimately found no such harm to the trademark, and therefore no infringement.[32]

As intellectual property lawyers know, infringement arises when there is a likelihood of consumer confusion among the relevant purchasing public. On this basis, a plaintiff suing for trademark infringement may claim damages based on lost or diverted sales, which, on its face, may not seem to clearly apply to the unauthorised use of trademarks in the virtual world. However, real profits are, in fact, generated on such sites. Moreover, as noted by the Intangible Asset Finance Society:

it is undeniable that the virtual world population and the “real” life population overlap, and behavior in one medium can surely have an effect, adverse perhaps in this case, on the other. This type of activity may further prevent one from being able to fully exploit IP rights and build IP equity, in particular brand equity, by weakening, diluting and tarnishing trade mark rights or serving as a barrier to potential licensing opportunities and avenues.[33]

Other examples of virtual world trademark infringement include two cases involving the company Eros LLC. In one instance, Eros sued Leatherwood for the making and selling of unauthorised copies of its virtual adult-themed animated bed, using Eros’ “SexGen” mark.[34] Eros sought an injunction and Leatherwood defaulted. In another case, Eros, along with other Second Life merchants, sued a party for duplication of its products and selling them at virtual yard sales, using its marks to identify the products.[35] Eros had owned a pending application with the U.S. Patent and Trademark Office for the mark “SexGen” (which has since matured to registration)[36], and a second plaintiff, DE Designs, owned a federal registration for the mark “DE Designs.”[37] The plaintiffs were granted a judgment by consent, wherein it was ordered that the defendant:

• Pay plaintiffs $524 as restitution for profits derived from the unauthorised copying and distribution of the plaintiffs’ products
• Represent to the court under penalty of perjury that any remaining unauthorised copies were destroyed
• Permanently cease copying, displaying, distributing or selling any of the plaintiffs’ merchandise
• Disclose the names of any alternative accounts or future accounts to plaintiffs
• Allow plaintiffs, through their attorneys, access to copy and inspect the complete transactional records maintained by PayPal, Inc. that were owned or operated by the defendant

As is evidenced by the above, businesses that operate entirely within a virtual world nevertheless receive recognition of their marks, at least in the United States (though maybe not in Europe, depending on the facts at issue), implying that the mark is “used in commerce” within the definition of the Lanham Act. In fact, Alyssa LaRoche sought and was granted registration of a design mark of an avatar by the U.S. Patent and Trademark Office in connection with virtual content creation services.[38] This can certainly be seen as a step ahead for trademark rights within virtual media. Why do companies bother with these lawsuits? Because the virtual economy is growing at a massive rate (witness Zynga, for example), and younger generations are learning their first hand experiences online.

In an EU law analysis, it is difficult to see how a sale of virtual goods will constitute a sale of goods for legislative purposes. As discussed, harmonised trademark law in the European Union turns on whether the goods and services related to the alleged infringer are identical or similar to the trademark owner’s goods and services (unless, under some domestic laws, use in commerce is made of a famous brand). To what extent will the courts decide that virtual Louis Vuitton wallpaper is similar to the real thing? This issue has not been decided (yet) in the English courts.

In the UK, brand owners might opt to rely on passing off, which, as discussed, does not turn on similarity but instead requires goodwill, misrepresentation and damage to be established. In other EU countries, similar remedies under unfair competition law may be available.

So, how do brand owners protect themselves? One option concerns registration for different classifications, such as for online interactive games (Class 41). EU member states adopt different approaches in this regard. Under UK law, an applicant must honestly intend to make goods and services available in the classes for which it registers a mark. This differs from the Office of Harmonization for the Internal Market (“OHIM”) practice, which permits broad registrations, and regulates undue scope through the provisions on revocation for non-use. This seems like a simple change to make in return for extending the protection of your brand. Some EU member states adopt a similar approach. In Germany, for example, applications need to be made in good faith in the sense that bad faith applications can be challenged. However, in practice the application is regarded as neutral so long as there is no actual indication of bad faith on the part of the applicant (which would have to be demonstrated by the party challenging the application). EU member states (along with the CTM regime) also employ a revocation procedure for non-use once five consecutive years of non-use after registration have passed. Furthermore, the hurdles set by the ECJ will still apply even if trademark protection exists for relevant services in Class 41.

Perhaps to prove it is a good copyright citizen, Second Life, like Twitter and Facebook, has a policy in place to help avoid infringement and impersonation.[39] Your account name cannot be the name of another individual to the extent that it could cause deception or confusion; a name that violates any trademark right, copyright, or other proprietary right; a name that may mislead other users to believe you to be an employee of Linden Lab; or a name that Linden Lab deems in its discretion to be vulgar or otherwise offensive.[41]

The policy adds that Linden Lab reserves the right to delete or change any account name for any reason or no reason. In addition, an account cannot be transferred without the prior written consent of Linden Lab (however, it will not unreasonably withhold its consent to the transfer of an account in good standing by operation of a valid written will to a single natural person, as long as proper notice and documentation are provided as requested by Linden Lab).

The policy further provides that a user shall not:

(i) take any action or upload, post, e-mail or otherwise transmit Content that infringes or violates any third party rights; (ii) impersonate any person or entity without their consent, including, but not limited to, a Linden Lab employee, or falsely state or otherwise misrepresent your affiliation with a person or entity…[41]

Linden Lab is generally known to remove any content from its site that incorporates another’s trademark without the trademark owner’s authorisation, or features the unauthorised use of celebrity material, as evidenced by the case wherein the Trump organisation put Linden Lab on notice that a user was incorporating its “Miss Universe” trademark in its “Miss SL Universe” pageant. Linden Lab put the infringers on notice of the complaint by the Trump organisation and proceeded to remove all references to Miss Universe and Miss SL Universe from Second Life. While this is certainly encouraging, the trademark owner or celebrity would be wise to proceed with caution in leaving the determination of what amounts to infringing or unauthorised use to Linden Lab.

The creators of Second Life have also established a Second Life Patent and Trademark Office (“SLPTO”) that offers dated evidence of any Second Life creation to help protect the users’ intellectual property.[42] While not a legal authority, the SLPTO serves as a neutral third party created to help creators protect their intellectual property, educate them on their rights, and add value to their products. The SLPTO also offers automated DMCA notices, copyright applications, limited edition numbers and individual item registration. As in other areas, this is the beginning of the development of “virtual laws,” where virtual worlds seek to operate under their own distinct and unique legal framework, often based on real legal principles.

Celebrity Name and Likeness

As noted above, virtual world users create avatars. Many users will fashion an avatar bearing a celebrity’s name or likeness. This action results in a separate category of trademark infringement and, in the United States at least, generates rights of publicity issues; but the results may surprise you. The lead singer of the band Deee-Lite sued Sega of America, Inc. for common law infringement of her right to publicity, misappropriation of her likeness, and false endorsement under the Lanham Act (among others), based on the alleged use of her likeness as the basis for a character in one of its video games. Despite the fact that the character bore similar facial features, hairstyle and clothing style, and recited the singer’s catchphrase, the court held that there was “sufficient expressive content to constitute a ‘transformative work,’” protected under the First Amendment.[43] In a separate avatar-related case, Marvel sued NCSoft for copyright and trademark infringement on the basis that the avatars created in its “City of Heroes” game were “identical in name, appearance and characteristics belonging to Marvel.”[44] The case settled.

As these cases evidence, trademark owners and providers of virtual world platforms remain ever vigilant of the growing concern regarding the unauthorised use of trademarks and likenesses. It is in the best interests of both parties to work together in protecting the trademark owners’ rights in order to avoid costly and preventable litigation.

Bottom Line—What You Need To Do

It is of the utmost importance to have a strategy in place in order to best protect your ownership of intellectual property. By aggressively policing your trademarks, service marks, trade names and copyrights, intellectual property owners will be in the best position to prevent claims that they have waived their ability to enforce their ownership rights, while at the same time discouraging others from any unauthorised use of such marks and works of authorship.