Second Life(tm) Trademark Turmoil Continues-- And Gwyneth Lays Down The Gauntlet (Updated)

"®  is the new black!", fashionista Kit Meredith announces sweetly, then hands me the latest must-have accessory for the metaverse:  Intellectual property symbols converted into giant ear rings. Kit created them on a lark for friends, she tells me, but Crap Mariner has been passing out copies across the grid, so you're likely to see them dangling from fashionable heads around Second Life.  It's only the most overt response to the tumult over the Lindens' latest trademark policies, scheduled to go into effect in three months, but seems to be causing more anxiety, than understanding.

"I know people who've gone through a year of blog posts to update all the references [to Linden trademarks]," NWN fashion correspondent and blogger Irish Ophelia tells me, "and I really won't have the time for that for more than three months, so I have kiiinda been freaking out about it."  I'm not sure that's required-- if I read the guidelines right, it's only necessary for bloggers to include the "®" symbol on "your first or most prominent reference to a Linden Lab brand name", i.e. on your banner. 

Still, I'm not entirely sure myself.  Then again, neither is Gwyneth Llewelyn, and she's one of Second Life's most influential intellects (named as such in the official guide), along with being CEO of Beta Technologies, a leading metaverse developer which just helped launch the official SL presence of Slovenian public broadcasting.  Seeking clarification in an open letter to the Lindens on her blog, she points out how the new policy contradicts Lindens' previously established guidelines:

Your previous policy, established in May 2004 (”Second Life® Fansite Tolkit”), and later reinforced with referral programmes like “Viva La Evolution”, positively encouraged the widespread use of your trademarks, so long as it was quite clearly displayed that no infringement was intended. To requote your own terms of agreement for the usage of your trademarks:

USE OF SECOND LIFE MARKS

   While you are in full compliance with the usage guidelines described
   here, you may use the “Second Life” name on your website, as well as
   the related logos and graphics available at Toolkit, solely in the
   form described there. Additionally, you may use screenshots from
   Second Life to the extent that Linden Lab has the right to authorize
   use of the content within such screenshot, including screenshots of
   Linden in-world objects and Linden avatars, subject to these usage
   guidelines.

Having quoted that Linden document from 2004, she continues:

We would thus kindly request that you clarify your position regarding the usage of the trademarks Second Life® and the logo on all fansites, blogs, forums, or other 3rd party websites offering products and services related to Second Life®. This clarification should be as easy to follow as your previous policies on the usage of those trademarks. They should make clear that all people intending to /promote your product/ and /raise your brand awareness/ are not facing lawsuits because they have faithfully used your trademarks using the old policy, and wish to continue to do so in the future.

Read the rest of her essay here.  I contacted the Lindens' press representative about Gwyn's request, and will post their reply when/if I receive it.

5:43pm:  Peter Gray of Lewis PR (Linden Lab's press rep) just e-mailed to say a Linden response to this issue is forthcoming, either tomorrow or Monday.

Comments

[Brace]

Good lookin out.

I'll be VERY interested in seeing what Peter has to say about all this.

All I can say (aside from my own blog post on the subject) is that I'm getting weh tired of LL's actions.

Like they live in this bubble of the Present, and think there is no Past; and just make moves for the Future like there's no need to be CLEAR on things.

*sighs*
-BC

[Dusan Writer]

<<< Beyond fatigued.

And I haven't even been around that long. As I've said, it's not that they shouldn't protect their trademark, it's that they've demonstrated yet again that they are inept at community relations, which translates to developer relations, which means that instilling confidence on behalf of the World that Must Be Obeyed in clients who might want to take a crack at this virtual world stuff is increasingly difficult.

Where was the press relations guy BEFORE all this happened? Like a little letter out to the press or an interview or a note or...well, list goes on. I've ALSO mentioned this elsewhere but I posted in passing about 3DVIA in reference to this whole mess, and a rep from their company invited an e-mail discussion through the blog within hours.

*shrugs*

It's not just that it might be a simple banner or footer change, it's how it was handled. And the "inSL" logo is useless IMHO (no meaning or equity to the outside world, who won't know what SL stands for and will wonder why it's popping out of, what, a broken prim?)

All right, weary, I rest.

[Ann Otoole]

Wagner... we really must do something about that tie outside of your vest/jacket. tsk tsk tsk.

:D

[T_S_Kimball]

>>> . . . if I read the guidelines right, it's only necessary for bloggers to include the "®" symbol on "your first or most prominent reference to a Linden Lab brand name", i.e. on your banner.

That's the core of the problem really; It's not clear. Admittedly its been clearer than I've seen these things before (yes, I've actually read the FULL TOS - several times), but its still conflicting with other parts of the site.

As for the comments on your other post (regarding TOS 4.4) that's been revised as of Thu afternoon or so. And that, admittedly, is quite clear now: No use of trademarks without permission, period. And this is not really helping any - amongst all media we have access to now, they say just about everything. *headdesk* Or did they finally pull the section that Gwyneth sited?

If I intend to get things rolling for my project, I need a clarification soon too. Of course, this is just giving me more time to research the other 'venues' while waiting.

And what, exactly, am I supposed to do with the above regarding my site? The document in works is easy enough, as you said. However, I am only a casual poster about this place - enough so that my MOUL counterparts could easily plant me as an evangelist - yet its not often enough to *have* a constant, prominent reference. I may just finally fudge it and add a 'Legal' page like everyone else does. Bah, can't stand those.

--Timothy Kimball
aka Alan Kiesler

[Who is now looking to get a D'ni translation of 'Second Life (TM)' to use from now on in his site - pfft.]

[Benjamin Duranske]

The odd thing for me is that this policy is the model of clarity compared to things were were getting even a year ago (remember the original six line post banning the "broadly offensive?")

Most of the confusion comes from this: Linden Lab is telling what you have to do with their brands, but these rules only apply when you are not using the brands nominatively -- one of the categories of "fair use" that people talk about. When you are using the marks to refer to the actual product or service, you can really just do what the AP Stylebook says and capitalize them. I have no intention of peppering every article about Second Life on VB with the ® symbol. This helps avoid genericide, and should keep the attorneys happy. My take: if it's good enough for the New York Times, it's good enough for me.

Linden Lab isn't going to say this in the policy, which is why there's confusion on this point, but unless Linden Lab's attorneys take a very different approach than every other brand on the planet, you shouldn't need to keep a finger on the ® button when writing about Second Life.

Note though: like any other brand identifiers, blog banners, names, and graphics are subject to the other rules, so I don't get to use "Second Life" in my tagline or graphics just because I have a news/commentary site. Which does prompt a question about NWN's banner.

Like it or not, they have the right to do this, though there's a caveat....

The "but they let us do it for a long time" argument actually is shorthand for a pretty reasonable legal argument on this point, called "estoppal." The idea is that if one party encourages induces an expectation and encourages people to act on that expectation, and then people do act on that expecation (and it costs them money) the person who encouraged the action can't change his or her mind later without paying for the cost.

Basically, the argument would be that Linden Lab's 4+ years of outright encouraging the use of marks at great expense to users in a formal written agreement prevents them from changing their mind now. This is a pretty expensive fight, though, and I am guessing that nobody is going to challenge them on it. A brand owner who wanted to fight could, however, possibly get some of the "information wants to be free" folks to back the suit.

Crossposting to comments at VB (article linked off my name) as this replies to a great point raised by SLCN.tv's Wiz Norberg there.

[Benjamin Duranske]

Typo on a key word - the legal argument is "estoppel" (with an "el") in case you want to look it up. Actually, I'll paste a link in to Wikipedia's entry on estoppel, which looks pretty good.

[Kit Meredith]

Ben, I've been meaning to comment on your original post on VB, but haven't made it by. Since I'm here anyway (can't stop staring at myself at the top of the post :P), let me get your thoughts on this. Maybe I'll go cross-post it on VB and clutter up the blogosphere just a bit more.

Yes, reporting on Second Life in our blogs is nominative use, and under trademark law (US at least) we're probably in the clear and don't have to follow Linden Lab's wishes that we mark things with an ® or say "my Second Life experience" rather than just "my Second Life." However, isn't there a wrinkle that comes out of the Terms of Service? The new ToS, and its section 4.4, mandate that we comply with LL's guidelines on using their marks. By agreeing and continuing to use SL, haven't we bargained away our ability to use the marks nominatively?

The argument has been raised over on the SL Blogger's forum that the ToS can't extend outside of SL to third party blogs and such. I'm not sure that's legally correct, but I know that there is some precedent in the past where LL has said their policy is not to enforce the ToS for things that happen outside SL. But since LL seems to be changing their IP policies left and right these days, who knows where we stand on that...

[Benjamin Duranske]

They can already throw you out for any reason or no reason at all, so the analysis of whether you give up your right to nominative fair use by clicking on the TOS is somewhat moot, but legally, you definitely can give up rights in a contract (for example, you give up the right to sue them anywhere you want to in the TOS in favor of venue in San Francisco, a right you'd otherwise have).

There's a point where it would be just the height of stupidity to enforce it though -- and pitching every blogger who decides to follow convention and simply capitalize their trademarked terms would definitely hit that point, imho. They'd essentially shut down 99% of the buzz machine. My guess is that they'll clarify this point in favor of nominative fair use in their upcoming press release, while sticking to their guns on the rest of it... but we'll see, I suppose.

If they decide to take a hard line, they can toss 'Benjamin Noble' as a test case if they'd like to. I've already said I will use their suggested text in promotion for my book and for VB, but I have no interest in polluting the copy at VB with trademark symbols for one of the many companies I write about, and would be willing to have that fight. In fact, I suspect that the EFF would consider assisting in a case like that, now that I think about it.

[Kit Meredith]

Always good when you and I agree on something, Ben - you've basically echoed my thoughts. I agree they don't need cause to boot anyone under the ToS but it certainly helps if they can point to a clause that's been violated - otherwise, why have any specific provisions such as 4.4 in there in the first place?

I truly do hope we get some clarification in LL's upcoming press release. Yes, LL would be monumentally stupid to take this fight to the bloggers, and it probably won't ever happen. But, unless and until they clarify, there would always be the possibility that they could, and that's a Sword of Damocles we certainly don't need hanging over our heads.

Though I am loathe to, there is one thing that I do disagree with you on from your first comment, and that's when you said that NWN's banner raises TM questions. Just because a mark is used in a title, header, or tagline doesn't necessarily make it improper. One could argue that Hamlet's tagline is quintessential nominative use: he uses the word mark, rather than a logo; he doesn't use it in a way to imply association; and there really isn't any other way for him to refer to what he's doing other than mention "Second Life." What could he otherwise do - say "Wagner James Au reports first-hand from That Virtual World"?

Of course, there's also the underlying issue, fundamental to any trademark anaylsis, of whether there's any likelihood of confusion. I think you'd have a hard time arguing that NWN's banner creates that, especially if he adds an ® and a disclaimer of association. (Hamlet, just my thoughts as a friend and loyal reader - not legal advice.)

[Benjamin Duranske]

I like the analysis of nominative fair use in the banner tagline, but my reading of the policy is that is precisely what they are trying to kill off -- using the word in branding of a site without a letter saying it's okay (and even then, I suspect, they'd want "Reports First-Hand From the Second Life® World" or something like that). Also not legal advice, but an interesting example of a place where the policy remains confusing, or at least where a lot of people might very much like it to not say what I think it says.

[Kit Meredith]

Well, then we're back into the la-la land of a use which is likely not a trademark infringement, but still might be a violation of the ToS. Exactly the kind of situation that I hope their statement, whenever it comes, clarifies.

Ham, apologies for mucking up your comments with all the lawtalk! :)

[Nobody Fugazi]

Not that Y2P is on Ham's reading list, but I'll toss out that there is also a discussion from yesterday continuing here:

http://www.your2ndplace.com/node/1044

[jeanricard broek]

I made my comment about this issue in a post about the Mitch Kapor interview today. Please read if interested: http://jeanricard.tumblr.com/post/30111928

[John Branch]

Here's a question that I'll bet almost no one reading this post can answer: When's the last time you saw a trademark symbol? Rather, when's the last time you noticed one? Most of us don't notice because most of the time they don't matter. This is probably true even for those of us whose work has some public visibility or prominence. I work at a national magazine, which is hardly alone in making frequent references to the Oscars. We never, or almost never, bother to include the trademark symbol; the only possible exception is when it might otherwise appear we're claiming some association with those awards or with AMPAS. The Academy has essentially no reason to object to our use of their trademark, and if an occasion arose they did object to, they'd almost certainly begin by making a nice simple private request for us to avoid repeating it.

I'm grateful for the discussion of the legal details above. Clearly, one can't offer "Don't worry" as a piece of legal advice. But as a practical matter, I'd say exactly that. Linden Labs can stand to clarify its position. But I doubt they'd get much sympathy from the courts or even from many lawyers if they tried singlehandedly to change common cultural practices. Most of the time (to repeat myself), this just doesn't matter.

[T_S_Kimball]

John,

With the help of Benjamin and Kit's discussion, the problem's definitely been simplified somewhat.

As you said, the casual reference (for most everyone) will not need it. However, there *are* a large number of companies and brands using SL or some variant of it in the name without that trademarking info.

This is different to your Oscars analogy, in that important respect - unlike your using the trademarks to make sure you're not usurping their mark, SL-based companies just aren't doing it.

That, ultimately, is the problem that Linden Research is in fact trying to fix. The problem still stands, though, that most of said companies were compliant with older rules *that still exist in some form or another* on the site. If they're going to make blanket changes like this, they need to sit down and remove the old stuff as well - globally.

--Tim Kimball

[Storm Thunders]

So... did Peter Gray get back to you yet?

[Hamlet Au]

No announcement has come. "Due to a high volume of inquiries on the topic," Lewis PR's Peter Gray tells me instead, "Linden Lab plans to address these questions in another blog post which should be up soon."

[ely]

regarding this from above "By agreeing and continuing to use SL, haven't we bargained away our ability to use the marks nominatively?"

What if, in theory, I was not a resident of SL but I did run a web site highlighting say, the fashion or photography within SL. Then I would not be bound by the ToS, and therefore would only need to follow trademark law, not the SL ToS. I better sell my site to my mom or someone who never intends to be a resident!