Ten Trademark Clarification Questions For The Lindens

The survey results are in, and they clearly suggest Residents have numerous unanswered questions about the Lindens' new trademark policies, despite this follow-up post.  Numerous readers posted their queries here-- thanks to all who submitted-- and I've collected and slightly reworded ten of the most pertinent here.  I'm forwarding them to the Lindens, and will post any replies when I get them.

1 - For four years, the Lindens have encouraged Residents to use their rightfully registered trademarks for all kinds of fansites as long as they included the clause, “Second Life® and Linden Lab® are trademarks or registered trademarks of Linden Research, Inc. All rights reserved. No infringement is intended.”  Now that policy has been drastically changed, and the company is demanding compliance.  Isn’t this estoppel?

2 - Does Linden Lab intend for the Terms of Service to be coextensive with trademark law? If not, how does LL justify restricting our speech and activities through the ToS in a way that isn't required to protect its trademark?

3 - Will I be covered if I simply put in my blog header/sidebar all Linden Lab’s names and trademark and copyright identifiers, so I don't have to worry about TM-ing and ®-ing every time I write the words in my posts?

4 - Does Linden Lab plan to enforce the ToS for actions outside Second Life?  There's precedent in their past statements that they won't, as a matter of policy. We need to know if that has changed.

5 - Why aren't blogs and other names eligible for grandfathering, since they were set up before the restrictive policy? And, as domain names are owned, is restricting use now something that should be paid for by LL?

6 - The “disparagement” clause has me concerned... what will be considered disparagement? What will be considered fair criticism? Who decides? What appeal is there?

7 - Why did this new trademark policy require a Terms of Service change? TOS applies to restrictions and behavior inside SL. It means, "comply with this agreement, or else stop using SL, or else we'll terminate your account." Is my account somehow at risk due to the domain names I have registered outside of SL, before the sudden change in policy, if I refuse to comply?

8 - Is Linden Lab honestly claiming the exclusive rights to any and all domain names starting with slx.com, where x merely one common noun, or any phrase with fewer than two nouns, plus any domain name containing the words second and life next to each other?

9 - Why did Linden Lab go through special measures to establish the fact that they can ban you for not following their extra-special branding policy?

10 - Why hasn’t Linden Lab differentiated between real trademark abuses (i.e. wrongly suggesting that one’s product/service is affiliated with Linden Lab) and nominative fair use (i.e. discussing or referring to Second Life by name)?

Comments

[Aleister Kronos]

Just wondering, in an idle moment: Is this page's non-conformance deliberate or accidental? Just curious...

[Dusan Writer]

Wonderful summary of the concerns. I'm not sure anyone in the blogging or Second Life world community begrudges Linden Lab the right to protect their trademark (did I append Second life with the correct noun? Do I need to? I'm just posting a comment, do you need to put the trademarks in a comment? Is my posting without them trademark infringement when I do it on someone else's blog?)

For me the main points of contention include the fact that they are implying through the change of the TOS that they reserve the right to enforce trademark outside of legal remedies and use their right to ban or cancel accounts to pressure compliance. The second point of contention is with how they handle (as they have in the past) policy change, where the past is swept aside without answering what would be obvious questions about how a user transitions from one policy to another. And the third is practical, although I take some relief in the fact that I read their guidelines as saying that if I am outside the US that I don't need to learn how to use those tricky symbols...but then, how do they KNOW I'm outside the US? And if they assume I'm not, can they use the TOS to try to enforce compliance?

Finally, it's very simply about communication. Why are they doing this? Why now? What are they worried about? Why do they have to go to such extreme measures?

Thanks for keeping us posted on all of this and nudging Linden. And please continue to report on the efforts around Gwyn's petition and protests!

[Princess Ivory]

I"m confused. Are we supposed to be using the ® or the ™ ? now? They really can't claim the © mark, given its meaning and context. http://www.uspto.gov/web/offices/tac/doc/basic/trade_defin.htm

And in what circumstances do we have to use it?

If I am writing in my blog and I mention "Second Life" am required to use a trademark symbol?

Princess Ivory

[illovich]

As far as the change being estoppel, if I read the wikipedia article correctly (IANAL) it is at best equitable estoppel, which would only be useful in defending yourself against an infringement claim from LL, inc:

"Equitable estoppel is distinct from promissory estoppel. Promissory estoppel involves a clear and definite promise, while equitable estoppel involves only representations and inducements. The representations at issue in promissory estoppel go to future intent, while equitable estoppel involves statement of past or present fact. It is also said that equitable estoppel lies in tort, while promissory estoppel lies in contract. The major distinction between equitable estoppel and promissory estoppel is that the former is available only as a defense, while promissory estoppel can be used as the basis of a cause of action for damages. 28 Am Jur 2d Estoppel and Waiver § 35"

http://en.wikipedia.org/wiki/Estoppel