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.

 
Forgot your password?
Username :
Password :

Shout box

You're not permitted to post shouts.
E. Zachary KnightSome great comments about gender diversity in game development from GDC Europe. http://gamasutra.com/view/news/250417/Women_in_the_game_industry_share_stories_of_improving_diversity.php08/04/2015 - 3:11pm
Sora-Chan@EZK: It's kind sad that kind of thing still occurs to this day (and for good reasons...)08/04/2015 - 2:33pm
E. Zachary KnightA woman author shares her experience submitting her manuscript to publishing agents under a man's name. http://jezebel.com/homme-de-plume-what-i-learned-sending-my-novel-out-und-172063762708/04/2015 - 1:21pm
james_fudgeme either. They are rolling it out in phases.08/04/2015 - 12:41pm
Big PermI haven't got my notification yet, even though I reserved it the day the pop up came.08/04/2015 - 12:27pm
james_fudgeThanks Matthew. I have not yet installed Windows 10, but the complaints about it have been minimal.08/04/2015 - 12:19pm
benohawkhttp://goo.gl/6yZ7EO suggests you can kill it all, but I haven't tested it on my system as of yet. And I wouldn't recommend digging in the registry or playing around withdisabling services for most users08/04/2015 - 12:18pm
Matthew Wilsonyes you can turn it off08/04/2015 - 12:15pm
james_fudgeCan you completely disable it though? I think you can minimize what it collects.08/04/2015 - 12:06pm
benohawkThe Win 10 data collection sounds scary, but I think it would be just too much data to be useful08/04/2015 - 11:57am
benohawkNo need to apologize Big Perm08/04/2015 - 11:55am
benohawkThe changing to 0 only being a 1 was local security policy change, not the reghack08/04/2015 - 11:49am
Big PermSorry Beno, it looks like you're right.08/04/2015 - 11:49am
Big PermFrom what I've heard (and obviously I could be wrong here), but I hear even setting it to "0" in the registry will only change to "1" or "Basic" collection. I'll try to find the article I got this from08/04/2015 - 11:40am
benohawkBig Perm, you can disable telemetry, just not through the gui. It's a matter of adding a registry key and disabling a couple services08/04/2015 - 11:34am
Big PermBlazers w/ t-shirts trigger me. This madness must be stopped08/04/2015 - 10:36am
PHX Corphttps://twitter.com/JimSterling Jim Sterling's commentary of the Xbox Gamescom event08/04/2015 - 9:34am
Big PermI'm talking about not being able to fully disable telemetry unless you have Enterprise software. It's just creepy to me08/04/2015 - 9:31am
TechnogeekBig Perm: If you're talking about the image I think you are, then no, not really. The claims it makes are, at best, extremely misleading in many instances.08/04/2015 - 9:28am
E. Zachary KnightBig Perm, That would make logical sense, so of course YouTube would not allow you to set your subscription page as the home page.08/04/2015 - 9:14am
 

Be Heard - Contact Your Politician