Trademarks & Second Life

In this article, Ross Dannenberg offers answers to the question « Do trademark laws apply in the virtual world ? » Well, yes. The answer to this question is not only a satisfying intellectual exercise for trademark practitioners, but is a crucial question for all the companies marketing their wares on Second Life and in other virtual worlds. As Mr. Dannenberg clearly states, «a trademark may have originated in either the real world or the virtual world, but each trademark serves the same ultimate purpose -- it acts as a source identifier, an indication of goodwill associated with the provider of the goods or services. » Some real life companies are expanding their marketing into virtual worlds, sometimes finding it ain’t that easy, whereas some businesses are exclusively present on Second Life, and making a killing at it to boot.

As Mr Dannenberg points out, the arrival of bona fide real world companies in Second Life expands the risk of likelihood of confusion, as both trademarked virtual goods, and fake virtual goods are presented to the public.

Once a trademark is registered, its owner can protect it on Second Life by filling a John Doe lawsuit , then subpoena Linden Lab in order to learn the real world name of the avatar that infringed the trademark. The EULA may also provide tools to protect real life trademarks.

Paris Is Back In Court

Paris Hilton sues Hallmark for Trademark infringement. Copy of the complaint here, via TMZ. Hallmark is selling a card, "Paris First Day as a Waitress", featuring a photograph of the head of Paris Hilton over the drawn body of a waitress. The waitress offers a steaming plate of food to a customer. Paris amicably warns the customer: "Don't touch that, it's hot". "What's hot?" replies the customer, while pointing its finger as the plate. "That's hot" replies the blond heiress (her roots show on the picture though.)

Ms. Hilton is suing Hallmark for commercial appropriation of identity, invasion of privacy, misappropriation of publicity, false representation that Ms. Hilton endorses the product, and infringement of a federally registered trademark.

Ms. Hilton "catchphrase" is "It's hot!", and she registered the phrase as a trademark this year. I checked on TESS, and found three registrations: Ms Hilton has registered "That's hot" in three categories:

1. Alcoholic beverages, namely, wine, champagne and prosecco

2. ELECTRONIC DEVICES, NAMELY, CELLULAR TELEPHONES, CD PLAYERS, CASSETTE PLAYERS, DIGITAL AUDIO FILE PLAYERS, DVD PLAYERS, HEADPHONES, HAND-HELD PERSONAL DIGITAL ASSISTANT/ELECTRONIC ORGANIZERS; HAND-HELD UNIT FOR PLAYING ELECTRONIC GAMES; ELECTRONIC GAMBLING MACHINES, NAMELY, SLOT MACHINES WITH OR WITHOUT VIDEO OUTPUT; VIDEO GAME SOFTWARE; COMPUTER GAME PROGRAMS; VIDEO GAME MACHINES FOR USE WITH TELEVISIONS; COMPUTER GAME EQUIPMENT CONTAINING MEMORY DEVICES, NAMELY DISCS AND CARTRIDGES

3. MEN'S AND WOMEN'S CLOTHING, NAMELY, SHIRTS, SHORTS, JEANS, JACKETS, SKIRTS, SLACKS, BLOUSES, DRESSES, VESTS, COATS, SWEATERS, SCARVES, SWIMSUITS, UNDERWEAR, UNDERPANTS, SLIPS, CAMISOLES, BRAS, NIGHTGOWNS, ROBES, SOCKS, HOSIERY; INFANTS' AND CHILDREN'S CLOTHING, NAMELY T-SHIRTS, SWEATERS, LONG SLEEVED SHIRTS, SHORTS, PANTS, JUMPERS, JUMPSUITS, OVERALLS, ONE-PIECE PLAYSUITS, PAJAMAS, SOCKS, DRESSES, SKIRTS; MEN'S, WOMEN'S, CHILDREN'S AND INFANT'S FOOTWEAR AND HEADWEAR; BELTS.

"That's hot" is a popular trademark, and others registered it under different categories (for instance, a Californian company registered it for the Frozen yogurt; Ice cream; Puddings; Sorbet , and in the Energy drinks categories...

Hallmark's defense is fair use. Is it fair use as in trademark fair use? Fair use in copyright? Is there such a defense as fair use in the right of publicity? I will have to research in order to answer that last question. A commercial appropriation of publicity, right of publicity, action is the more likely to be successful, not because of the use of "It's hot", but because Hallmark use a photograph of Paris Hilton for commercial purpose. The right of publicity is codified in section 3344 of the California Civil Code.

I mentioned last month an article written by Professor Dogan & Professor Lemley. They advocate making the right of publicity a part of trademark law.

If one agrees with them, Hallmark, in order to prove fair use, will have to prove that the public interest in the satire is greater than the public interest in not being confused by the use of a registered trademark. In that case, there is no likelihood of confusion. The card should be protected by the First Amendment, especially since Paris has put herself in the spotlight lately. As a social commentary, a satire is an effective tool to comment on the heiress' antics.