Virtual Content "Inspired By" Real Trademarked Products in Legal Limbo on Second Life's eCommerce Site

If you sell virtual content on xStreetSL, the Second Life eCommerce site recently acquired by Linden Lab, you may want to remove any references to products that are trademarked in the real world.  Even if they're designated as "inspired by" these products, and not imitations, their sale may soon be prohibited.  That would likely include the three SL variations of well-known trademarked products pictured above, which I found after a few minutes of browsing.

I discovered this after talking with a content creator earlier this week, who told me that it was considered permissible to sell products which referenced trademarked products on the site, just so long as an "inspired by" clause was added in the sales description.  I wanted to make sure that was accurate, so I double-checked with Cayle Linden, the former owner and now manager of xStreetSL.  (A service that was previously known as SL Exchange, ironically enough, before the Lindens' enforced their own trademarks last year.)  That turned out to be only partly true:

Far as trademarked products, Cayle told me, "For a long time Xstreet/SL Exchange did allow 'inspired by'-type content, but whether that is acceptable or not had become a question a few months before the acquisition. I'm pretty sure the legal team is currently reviewing this, though I don't know if a decision has been made yet." 

I'm not a lawyer, but my personal guess is the Lindens are likely to err on the side of caution, and impose restrictions.  Especially as real commerce in virtual item sales continue to grow (it was estimated as high as $1.5 billion/year back in 2007), while more companies begin minting official versions of their products in virtual settings.

Comments

[Nerolus Mosienko]

If they could so easily remove the obviously "inspired" content, then they could just as easily remove content that is a blatant rip/theft of something I (and other content creators like me) created.

I hope they are ready to go all the way with it, if they're going to do it at all.

[Peter Stindberg]

Our last furniture creation - the Emphasis chair (http://tinyurl.com/agp28v) - is inspired by a RL chair. However we have been in contact with the manufacturer and got their blessing (and actually support) for this. How does that work out?

[Ann Otoole]

Trademark infringement does not enjoy a so-called "Safe Harbor" provision like copyright does last time I checked.

But anyone stealing trademarks is simply telling the universe they, for some reasoning, are unable to create content that can stand on it's own and do well. So they are trying to stand on someone else's shoulders. Like the misappropriation of the Converse All Star Trademark which is a 5 pointed star on any shoes. Good grief these designers are making great shoes. They do not need to use the converse trademark at all. They need to create their own shoe trademark and use it. People will still buy the shoes because they look great and never needed the Converse trademark at all. Equally bad on shoes is anything resembling the Adidas trademark so watch out for those.

Come on people! be proud of your work. Put *YOUR LOGO* on *YOUR WORK*.

And keep an eye out for your works filtering into real life because some of it probably is. No Joke.

[Shava Nerad]

Well, Coke pretty famously allowed people to use their logo in SL on goods for sale. They decided it was free promotion. So I imagine if you have the blessing of the trademark owner you would be fine.

But in a previous lifetime, I worked in entertainment licensing, and I know I see a zillion infringements of things like Star Wars, Star Trek, and other properties that, if this is treated as trademark infringement, are goners. However, if SL is treated like a fansite, they might be ok -- or they might be determined to be ok, only if they are given away and not sold for an amount of lindens that could be converted to cash, eventually.

It's a curious problem, ain't it...?

And, for the designer -- nope, sorry, trademark law is easier to enforce than design theft, legally if not technically. If the item is reversed engineered, I can't imagine you have any protection at all. If it's copybotted and renamed, then there might be some way to detect that it started as the same object -- that's technically possible, perhaps -- but has no legal bearing with the outside world of trademarks.

[Todd Borst]

You know this was coming. That's why I warned against it in my "10 Steps to protect yourself from Linden Lab" post. Item #7. Click my name for the link.

[Arcadia Codesmith]

Marvel Comics sued the makers of City of Heroes; not because they were recreating Marvel superheroes, but simply because they were providing the tools that made it possible to recreate Marvel superheroes. I believe the suit was settled (shortly before Cryptic announced that they had gotten the license to make Marvel Universe Online).

There are a number of stores that sell avatars based on these same characters. If Linden Labs doesn't take strong action in response to a takedown notice, they risk facing down Marvel's mutant lawyers in the courtroom.

On the flip side, there is a never-ending demand for Star Fleet uniforms, Jedi robes, and X-Men uniforms. Even substandard products of this sort sell well. Conversely, generic Space Officer uniforms, Star Knight robes or Team Mutant uniforms, even if exceptionally well-made, gather dust... and the more original and less derivative they are, the more dust they gather.

The companies ought to get a lot more proactive in working out limited licensing for fans and other small fish.

[radar]

I knew when this came up, the designers in SL would start whining about people stealing their stuff again. There's more fear mongering about design theft than actual theft. You guys make the RIAA look mild.

This is a no-brainer by LL. They have to do this. Stop turning this into an opportunity to whine about your own delusions of getting ripped off.

[Dedric Mauriac]

I'm guessing that Linden Labs would have a problem if I created one of their logos as a texture or object and sold it for profit with "inspired by" in the sales description.

[Sigmund Leominster]

Like most things in the legal world, there is usually a test case needed to establish what is and isn't permissible. Copyrights and trademarks are the property of the owner (well, duh) but this means that policing of the mark is down to that entity. Actions against misuse have the be taken by the owner on the grounds that they have not given permission for use. If Viacom give Annie Avatar the rights to create Spongebob T-shirts in real life, then Annie is safe and will not be sued. However, if Sandy Simulacra does the same, the Viacom folks can take action.

Linden Lab is not, and cannot be, a police force for copyrights and trademarks. They can, of course, vigorously defend their own marks (I await the knock on my in-world door for using my initials, SL, on my blog!) but they can't start an action because someone has a created an iPhone: That's up to Apple.

The potential test case may be by someone seeking to establish that LL are negligent in allowing the posting of lookie-likies. LL's defense has to be that they cannot be held responsible for content (you can't sue Google for kiddie porn) and they have no way of knowing if someone HAS permission (c.f. Peter Stindberg's comment about having cleared it with a RL company to have an 'inspired-by' design.

More telling for me is the prospect that RL companies will start to become concerned about rip-offs in virtual worlds. Perversely, this would actually turn out to be a big step forward for the acceptance of virtual worlds as a commercial entity.

[Rauthern]

The more I think of the lump sum (in $ millions) Cayle Linden got from selling XStreetSL to Linden Lab (at a time when an increasing number of people are homeless), the more I think I want to give money to charities rather than spending it on items that will make the fat cats even fatter.

[Doubledown Tandino]

Just slap a SL infront of your nikes... make em SLikes, and call it a day