People are starting to talk about the trademark issues associated with gaming and virtual reality:

Linden Lab has a well-deserved reputation for respecting intellectual property. Obviously, it doesn’t support trademark infringement. But it is equally as obvious that the explosive growth of Second Life has overwhelmed Linden Lab’s ability to devote sufficient resources — likely any resources — to this issue. Consider that the list of examples of marks that are “usually not acceptable” matches the biggest subjects of infringement almost perfectly. This isn’t really a criticism of Linden Lab; in the real world, the government doesn’t police trademark usage on companies’ behalf either.

As in the case of real world trademark infringement, it is up to the officers of concerned companies themselves to take steps to protect their companies’ intellectual property in virtual worlds. And it is this author’s opinion that businesses will need to begin paying close attention to the problem of trademark infringement in virtual spaces much sooner than they think, if they wish to avoid legal and practical difficulties later.

Always good advice. The issue seems, as we were discussing in the INTA “Internet Trademark Use” subcommittee last week, to fall into two categories, and two other categories. The first dichotomy is whether the infringement involved trademarks of the game or virtual community in question (e.g., Second Life, There) itself (or its reasonable facsimile?). The second axis runs along who is doing the infringement. So we have four possibilities:

  1. Community member infringing community’s trademark (e.g., game tokens or currency, or other virtual bling) — always covered by user agreement
  2. Community member infringing third party’s trademark (e.g., virtual community member opens up a Nike store of Second Life) — maybe covered by user agreement
  3. Non-community member infringing community’s trademark (e.g., game tokens or currency being sold on eBay — third party is merely an intermediary) — not directly covered; trademark infringement or fair use?
  4. Non-community member infringing third party’s trademark (e.g., selling unprotected currency or points to use in virtual Nike store on Second Life) – Okay, so perhaps there are only three possibilities. Or is there a creative way for the virtual community owner to reach out and grab value here, too?

This is an interesting set of developments. We’d better get used to it, too. Virtually Blind, where Benjamin Duranske focuses on this topic, clearly already has. Good blog to bookmark.

UPDATE: A dark side?

By Ron Coleman

LIKELIHOOD OF CONFUSION blog author Ron Coleman is a member of Dhillon Law Group in their New York City and Montclair, New Jersey offices. He is a graduate of Northwestern University School of Law and Princeton University.