Avatars, Trademarks,
Domains and Publicity Rights
December 11 , 2010
SLBA Headquarters
Presenter: Juris Amat
Legal@vipo-online.org
Virtual Intellectual Property Organization
www.vipo-online.org
IMPORTANT ISSUES WHEN CONSIDERING AVATARS OR AVATAR
NAMES AS COMMON LAW TRADEMARKS
1.
The applicable terms of service provisions
2.
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;
3.
how common law mark owners traditionally prove use, and how they would go
about proving such use on the Internet;
4.
the Natural Expansion Doctrine, how it is applied to common law marks, and what
impact the Internet might have upon this doctrine
5.
the Lanham Act, the problem that emerges when a common law mark owner can
prove continuous prior use, and how the Internet might affect this issue
6.
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
7.
use in commerce
Zone of actual goodwill
The first subpart is the “Zone of Actual Market Penetration.”
•
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
•
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 one of Reputation will
not be the sole determinative factor. Theoretically, trademark protection should not extend
beyond the area of market penetration.
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 <http://www.mttlr.org
/volfour/berlandi.pdf>.
Avatar names as domains
For a domain name to be registerable in the PTO, 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))
Use in commerce
The Lanham Act
1.
Under the Lanham Act, a person is liable for trademark infringement if s/he 砥se[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 . . . . 15 U.S.C. 1114(1)(a).
2.
There are similar use in commerce thresholds for unfair competition and dilution.
See 15 U.S.C. 1125(a) (conferring liability upon any person who. . . uses in commerce
any word, term, name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or misleading
representation of fact that is likely to cause confusion); 15 U.S.C. 1125(c) (entitling the
owner of a mark to an injunction against a person who at any time after the owner’s mark
has become famous, commences use of a mark or trade name in commerce that is likely
to cause dilution by blurring or dilution by tarnishment of the famous mark).
Use in commerce in VW’s
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.
The SexGen and DE Design Marks.
•
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-downloadable software 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)).
Graphic character protection, avatars and publicity or image rights
Copyright Protection
•
Warner Bros., Inc. v. American Broadcasting Cos. Michael Todd Helfand, When
Mickey Mouse Is as Strong as Superman: The Convergence of Intellectual
Property Laws to Protect Fictional Literary and Pictorial Characters, 44 Stanford
L. Rev. 623 (1992). 2 Id. At 628.
•
Detective Comics, Inc. v. Bruns Publications, 111 F.2d. 432 (2d Cir. 1940)
•
Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978), cert. denied, 439
U.S. 1132 (1979).
Trademark and Unfair Competition
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.
Excerpted from Protection of Graphic Characters (1998) Lloyd L. Rich
http://wiki.secondlife.com/wiki/Linden_Lab_Official:Snapshot_and_machinima_policy
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.
http://wiki.secondlife.com/wiki/Linden_Lab_Official:Snapshot_and_machinima_policy
(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.
4.3 You will comply with the processes of the Digital Millennium Copyright
Act regarding copyright infringement claims covered under such Act.
Our policy is to respond to notices of alleged infringement that comply
with the Digital Millennium Copyright Act ("DMCA"). Copyrightinfringing materials found within the world of Second Life can be
identified and removed via Linden Lab's DMCA compliance process
listed at http://secondlife.com/corporate/dmca.php, and you agree to
comply with such process in the event you are involved in any claim
of copyright infringement to which the DMCA may be applicable.
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 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 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.
Thanks for your attention!
For additional information please visit our website
www.vipo-online.org
and send inquiries to
legal@vipo-online.org or an IM to Juris Amat