Expert: Shannon Moore - 3/30/2008

Question
On March 24 of this year, Second Life, the virtual world created by Linden Lab, announced new rules concerning use of their trademarks. While these rules are unexceptional in some ways, echoing the basic rules of many other corporations, Second Life is itself a unique situation.

First of all, Linden Lab has actively promoted the use of their brand by Second Life residents for over four years. This has led several legal commentators to posit that an argument could be made for estoppel. One such is Benjamin Duranske, of the Virtually Blind legal site, who, in a March 26th, 2008 article entitled ""Second Life® Brand Center Launched, Thousands of Business and Organization Names Subject to New Trademark Guidelines," said:

  "If one was in the mood to fight, a better argument would
   be “estoppel” — essentially, that because Linden Lab
   encouraged the use of the marks (e.g. in text
   accompanying their fansite toolkit) and people took
   action based on that, that Linden Lab can’t now change
   its mind without at least paying for the financial
   damage caused by the change.
   http://virtuallyblind.com/2008/03/26/sl-brand-center/

My question, however, involves a different concept. Unlike other services, Second Life offers virtually nothing in the way of content. Every building, mountain, and blade of grass is created by the users, as are all clothing items, vehicles and tools. In this respect, then, Second Life acts more as a geographical place, such as a city or country, than a normal service.

Would it, therefore, have legal merit to argue that while "Linden Lab" is legitimately a typical trade mark, the words "Second Life" have the legal standing of a place name and are therefore openly available for businesses and services operating within that place?

Thank you for your time,

Christopher Simpson (Second Life name: Holman Tibbett)

Answer
Dear Christopher,

That's a very interesting question. I did a bit of research into filings for Second Life & found that Linden Research, which I assume to be the same as Linden Labs, does have registered trademarks for Second Life. Some of the goods/services descriptions are as follows:

"Entertainment software, namely, software that is used for providing multi-player access to an on-line game environment...Entertainment services, namely, providing an on-line computer game by means of communications networks; entertainment services in the nature of providing an on-line multi-player electronic computer game; entertainment services, namely, providing an on-line computer game that may be accessed by means of communications networks"

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=76976360 -- Link to Federal Trademark details

My take on it is that "Second Life" is not a place name in the way USA, California or Manhattan is because (1) it's very existence is virtual & (2) it's a brand name for the aforementioned goods/services.

I'm not familiar with Second Life in terms of user created content but I'd imagine it's akin to The Sims 2, where EA Games provides players a base game, if you will, but also allows users to create custom content for in-game play. While the content is custom & unique to the particular user, EA Games still owns the Federal trademark for The Sims 2(and the number of expansion packs). This means as the trademark owner, EA Games has the right to:

"1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods."

http://www.uspto.gov/web/offices/tac/tmfaq.htm#Basic002 -- Link to above quote

Hope this helps! Please let me know if there any other questions that I can assist you with. Thank you!

Warmest regards,
Shannon Moore
http://www.tmexpress.com
http://tmexpress.blogspot.com