Real Trademarks in Virtual Worlds

October 7, 2009 -

An article on Law of the Level takes a look at whether using real brands on virtual goods in online worlds—by someone other than the trademark owner—could be interpreted as trademark infringement.

A publication of the law firm Sheppard Mullin, the blog was written by Thayer Preece, a lawyer in the firm’s Video Game Industry Group. She begins to answer the question by noting that several real world brands have taken exception to counterfeit virtual goods sold online, especially when the money from these sales line someone else’s pocket.

One way to deal with infringements is to sue. Taser International, Inc. filed a lawsuit against Second Life creator Linden Labs (along with others) earlier this year, which alleged that fake Taser-branded products were being sold in Second Life and infringing on the company’s sales. Taser sought $75,000 in damages but eventually dropped the suit.

Another way to fight the knock-offs is to join the virtual world and pump out your own branded goods. Law of the Level writes that this is the tact Herman Miller took. In response to a number of fake Herman Miller goods offered on Second Life, the designer launched its own official presence in the world and even replaced “fake” Herman Miller products with “real” ones.

What would happen if a virtual world trademark infringement lawsuit made it to court? Breece writes:

At present, there is no legal precedent on this subject. But as the popularity of virtual worlds continues to grow, it seems likely that it will only be a matter of time before the courts make a decision on the issue. In the meantime, it will be up to each brand holder individually to decide how to respond to the emergence of this growing marketplace and its potential opportunities and pitfalls.


Comments

Re: Real Trademarks in Virtual Worlds

Video game companies must license any real world products in their games or they are guilty of trade mark infringement. I infer from the examples given that issue is coming from user-created content in games, which would appear to be a grey area. Not from the perspective of legality (I'd assume any use of real life names or appearance would be an infringment) but from the question of who is liable: the company who makes the tool (the game) or the person who uses that tool to violate a copy right infringement. The video game company, presumably possessing "deep pockets" makes for a more appealing target for lawyers.

Re: Real Trademarks in Virtual Worlds

Arguably, both could be liable. Or, at least, it isn't the case that only one or the other need be liable. The Lanham Act provides for two different types of liability: "direct infringement" (the tool user) and "facilitation infringement" (the tool maker).

Re: Real Trademarks in Virtual Worlds

Is this really all that different from mentioning a brand in a novel, or seeing one on a movie screen?

Come to that, don't companies usually pay to have their brand reinforced in media? Getting exposure for free should not be an offence, unless it depicts the brand in a deliberately bad light.

Re: Real Trademarks in Virtual Worlds

I always thought so. In fact, Ive already seen in some games where brands have had to be replaced because of licensing infringement. But yes, Ive always thought big companies shouldnt complain about people advertising for them without charge.

Thats also why I avoid clothes with logos on them; why should I pay them to advertise for them?

Re: Real Trademarks in Virtual Worlds

I think it's the phrases "branded products were being sold" and "infringing on the company’s sales" which make the difference.

Re: Real Trademarks in Virtual Worlds

"What would happen if a virtual world trademark infringement lawsuit made it to court? Preece writes . . . nothing which would inform her reader one way or the other as to the likely outcome of such a suit." There. Fixed.

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