September 2nd, 2008 by Benjamin Duranske
Linden Lab and a Second Life user known as avatar ‘Victor Vezina’ have been named in a Complaint (.pdf) filed in the U.S. District Court for the Northern District of New York by Second Life user Richard Minsky over alleged infringement of Minsky’s “SLART” trademark. The Complaint also personally names Second Life founder Philip Rosedale and former Linden Lab board Chair Mitch Kapor. Minsky, an artist who uses the avatar name ‘ArtWorld Market’ in Second Life, alleges that ‘Vezina,’ by “using the name ‘SLART Garden’ for an [in-world] art gallery and ‘SLartists of Second Life’ as the name of a group” has infringed Minsky’s trademark. Minsky also alleges that Linden Lab is liable for direct and contributory infringement, fraud, and tortious interference, and that Rosedale and Kapor are individually liable for fraud. The counts against Linden Lab and its directors stem from Linden Lab’s hosting of the allegedly infringing content and alleged failure to remove it when it was brought to Linden Lab’s attention.
Regular readers will recall that Minsky’s application for the “SLART” trademark caused significant controversy in the SL artist community when it was approved earlier this year. In an article for this site, trademark attorney Thayer Preece, a guest writer, then opined that “[i]n the end, this is a bad situation for people in the Second Life art community. Although the SLART trademark probably shouldn’t have been registered in the first place, it has been, and now people are faced with a choice of either losing the use of the word, or opening themselves up to potential lawsuits and account suspensions.”
‘Victor Vezina,’ the avatar at the heart of this controversy, has not been identified. Presumably Minsky will seek to compel Linden Lab to provide him identifying information behind the ‘Vezina’ account. The account’s Second Life profile describes the user behind the ‘Vezina’ avatar as an “aging rockr, into writing, blogging, walking, talking, flickring, secondlifing, painting, photographing, surfing.” Other fictitious defendants have been named as well, and could be added later if Minsky identifies other uses of “SLART.”
Minsky is representing himself in this action. The case is complex, and there are a lot of hurdles to clear before this is resolved, including likely early motions from Linden Lab seeking to dismiss the case for improper venue (the Second Life Terms of Service require filing in California) and to dismiss the claims against Rosedale and Kapor. These are not insurmountable problems, but they do involve tricky legal issues and may challenge someone without counsel, particularly as Minsky will be facing a team of trained attorneys representing Linden Lab.
Minsky has alleged:
- Direct and contributory trademark infringement Linden Lab;
- direct and contributory trademark dilution by Linden Lab;
- trademark infringement by the John Doe defendant known as ‘Victor Vezina’ and others;
- trademark dilution by the John Doe defendant known as ‘Victor Vezina’ and others;
- tortious interference by Linden Lab;
- fraud by Mitch Kapor;
- fraud by Philip Rosedale;
- and fraud by Linden Lab.
Please note that as with any lawsuit, these claims are merely that — claims. They have not been tested and none of the defendants have yet formally responded. This site will cover their response when it occurs.
By way of relief, Minsky seeks:
- A declaration that his trademarks have been infringed;
- an order compelling Linden Lab to remove unlicensed uses of “SLART” from Second Life and inform Minsky of the identities and locations of alleged infringers (including Victor Vezina and any other subsequently identified John Doe defendants);
- and $1000 per day from April 24 through the termination of the action for each act of alleged infringement.
The complaint sets forth Minsky’s story with rather more color than a typical complaint. Substantial excerpts follow.
As always, per this site’s policy on live cases, excerpts from filings are presented without commentary. Note that these are non-contiguous excerpts. For the full context, you’ll want to read the whole Amended Complaint (.pdf).
From the Complaint:
On November 19, 2006, I registered as a user of SL and chose the avatar name Artworld Market. I discovered that there were artists creating within this platform, artists who used the SL platform for social and business networking, and artists who import images of their real world artworks into SL and sell copies of these images to other residents in exchange for Linden dollars (represented by the symbol L$).
After a week or so exploring the art galleries of SL I decided to open a gallery there, reselling works that I acquired from other residents. I also decided to start a critical review of the arts and publish it as a website, as a real world book, and as a book inside SL. I thought about a name that could be used not only for the gallery and magazine, but for purposes beyond SL-for real world activities, such as a real world gallery showing traditional media, for publications that went beyond SL, for an art school, for publishing art online, for publishing musical works, and for other activities that I was thinking about, and came up with the name SLART.
SLART has a great sound as a name, and is also funny, because of the several colloquial meanings it has, including a slut’s fart, a fart made while sleeping, and someone who is between a slut and a tart. I searched SL using the SL search feature to see if anyone else was using it, and there were no uses found. I also searched online with Google and found no uses of SLART, other than the definitions relating to sluts and farts. I decided that SLART would be my brand name.
During the last week of November, 2006, I rented a space in SL for the SLART Gallery in a region named “Tamarack” from a group named “Skye Condos.” This was a virtual building that was situated in the sky. In SL you can place things hundreds of meters in the air, and avatars can come by teleporting. That means you can almost instantly (when it’s working properly) go from one place to another in SL simply by clicking your mouse on a link or map. 1 have maintained at least one SLART gallery in Skye Condos continuously since then, and at one time rented five condo galleries simultaneously that were linked by teleport devices or bridges. Shortly after renting the SLART Gallery space I registered the domain name “s1artmagazine.com~f’ or the online publication. That was December 14, 2006. I immediately began to review art exhibitions inside SL and write editorials about the business practices of creating, producing, distributing, selling and collecting virtual art, and how this differed from the Real Life (RL) art business. In real life I have been in the art business for over 35 years, as an artist, a gallery owner, and in other roles in both the profit sector and the not-for-profit sector. Articles about my work have appeared in many publications, including The New York Times, The Wall Street Journal and Money Magazine. I identified the SL gallery and the magazine with the brand SLART™, using the ™ symbol to establish my claim to the trademark.
The SLART mark was published for opposition on September 18, 2007. There was no opposition, and Registration Certificate 3399258 was awarded March 18, 2008 for the standard character mark SLART (Exhibit B, page 24).
In March, 2008 I discovered through the SL search feature that an avatar named Victor Vezina was using the name “SLART Garden” for an art gallery and “SLartists of Second Life” as the name of a Group. A Group enables two or more residents to jointly own property, communicate by a different method called “Group Notices,” and send Instant Messages (IM’s) to the group.
I contacted an attorney who operates a non-profit legal service inside Second Life using the avatar name Juris Amat. The service is named Virtual Intellectual Property Organization (VIPO). In RL her name is Tamiko Franklin, and she lives in Croatia. She is American with a Masters of Intellectual Property Law and is a member of the Massachusetts Bar. On March 16 Ms. Franklin sent Vezina a cease and desist (c&d) notice by Instant Message (IM). Vezina did not respond. IM’s do not provide proof of delivery. They can fail to be delivered. Not knowing who Vezina is in real life, we had no way of serving a paper notice, or of being assured that Vezina had in fact been made aware that sthe was infringing on my SLART trademark
On April 22 I wrote to Martin Roberts, Linden’s General Counsel, asking Linden to notify Vezina to cease and desist from the unauthorized use of my SLART trademark in Second Life, and to follow through with appropriate remedies if there was no compliance. This was sent U.S. Priority Mail, and was received April 24. I received no response from Mr. Roberts and Vezina’s infringing use remained in Second Life.
I asked Ms. Franklin to contact Mr. Roberts and find out what happened. She called Mr. Roberts’ office on May 13. On May 23 she received an e-mail response from an attorney in Mr. Roberts’ office named Laura Pirri. That day I searched for SLart Garden in SL and could not find it. I thought that meant Linden had acted on my request.
Since SLart Garden had disappeared I thought that I no longer had cause to pursue the matter with Linden, and told that to Ms. Franklin. The other parts of Ms. Pirri’s demands were ridiculous and I did not address them. I had no intention of abandoning my Federal Trademark and licensing theirs instead. Besides the fact that I own the SLART trademark and would not want to use a licensed mark, the name “SL Art Magazine” is not distinctive the way SLART is, does not sound as good, doesn’t have the multiple meanings that SLART has, and most importantly, the terms of the Brand Center License would limit the content of my magazine to art in SL [Exhibit D, p. 29, #6. For the Second Life World Only]. And I would not stop approaching other residents who infringe my mark. That is absurd. I have to protect my mark.
On May 29 Ms. Franklin wrote to Ms. Pirri saying “. . . he [Minsky] has informed me that he will no longer pursue action concerning the matter contained in his letter to Mr. Roberts as the cause for his concern no longer exists.”
Ms. Pirri replied on June 2:
“And did you confirm that he’ll abandon the SLArt registration with the USPTO? And that he’ll stop his demands that other Residents not use SLArt? Please confirm that. It’s important that he understand that he doesn’t have the right to a mark that contains our mark, and that he doesn’t have the right to demand that other Residents not make nominative fair use of SLArt.”
On June 3 Ms. Franklin replied to Ms. Pirri:
“As Mr. Minsky’s legal representative, I’m not in a position to advise him to abandon his trademark when there are absolutely no legal grounds for doing so.
Perhaps you can tell me … why is abandoning the registration in his legal interest?
Our position is this, the question of whether SLART and SL Art are the same has already been decided in favor of Mr. Minsky. SLART is a registered trademark and we reject assertions based on there being no legal difference between it and the term SL Art. Consequently, it is in the interest of Linden Research, Inc. that its employees, agents, representatives and other responsible persons do not support or condone infringing uses of the SLART trademark, either directly or indirectly.
Mr. Minsky is a trademark owner and as such will continue to enforce his right against infringing uses of his trademark and (yes) infringing uses include those which 1) advertise products or services that may easily be identified by the use of non-infringing terms (such as SL Art or SL Artists) or 2) may be construed as suggesting his sponsorship or endorsement.
Ms. Pirri wrote back a long rambling letter continuing to claim SL Art and Slart were the same, that it was descriptive; that I must abandon my trademark and that I must license their trademark. She wrote “We don’t recognize Richard’s trademark claim to “SLArt,” nor will we prevent others from making nominative fair use of our trademarks to describe art in Second Life.”
On July 11 I again searched for SLart Garden and this time I found it. I could not tell whether it had gone and come back, or had not showed up for a time in Search because of defects in the SL search process or other malfunctions in the SL system. SL is in constant development, with server software and viewing software being changed frequently, many bugs, crashes, disappearing inventory, disappearing objects, disappearing places, maps not working, teleports not working, and other malfunctions. Vezina had changed and expanded SLart Garden. Instead of saying SLart Garden, his gallery now had big signs that said SLART. I filed an abuse report immediately, a procedure you follow in SL when there is an issue with another resident. I also saved snapshots on my computer (Exhibit C, pp. 25-26). The report was filed inside the SL world from the offending location. The system automatically notes the precise location of your avatar when the report is filed, and it included a snapshot of the scene I saw there, with the infringing SLART sign. I received e-mail confirmation of the abuse report. This is the text of the report I filed:
“I am the owner of the standard character trademark SLART (USPTO Reg. No. 3399258). I also own the SLART GALLERY. This gallery is infringing on the trademark. The TOS assures me of protection for my Intellectual Property. In addition to using a large logo that says SLART on the gallery, there is also a sign that says SLART SQUARE, and the land is named “SLart Garden TEDONG SIM!” These are all in violation.”
On July 16 Ms. Pirri wrote to Ms. Franklin asking if we could schedule a phone call. On July 17 I participated in a three-way phone call with Ms. Pirri and Ms. Franklin. It was a disappointing phone call. Ms. Pirri spent a lot of time pressing me for details of my business plan, which is proprietary information, and reiterated that Linden will not recognize the SLART trademark. She tried to entice me to abandon my mark by saying that Linden would like to feature me on their website but will not unless I abandon my mark.
Linden owns all the material presented in Second Life. The SL Terms of Service (TOS) section 3.3 states:
“Linden Lab retains ownership of the account and related data, regardless of intellectual property rights you may have in content you create or otherwise own. You agree that even though you may retain certain copyright or other intellectual property rights with respect to Content you create while using the Service, you do not own the account you use to access the Service, nor do you own any data Linden Lab stores on Linden Lab servers (including without limitation any data representing or embodying any or all of your Content). Your intellectual property rights do not confer any rights of access to the Service or any rights to data stored by or on behalf of Linden Lab.”
On July 29 I filed a Civil Complaint, Case No.: 08-CV-819, of which this is the amended complaint, and sent it to Mr. Roberts with a Waiver of Service of Summons. The complaint was signed for on July 3 1. I followed up with an e-mail to Mr. Roberts, Mr. Rosedale, and Mr. Kapor on August 1. On August 4 Mr. Roberts replied to my e-mail and asked if we could speak on the phone the next day. On August 5 there was a phone conversation attended by Mr. Roberts, Ms. Pirri, myself, and an intellectual property attorney whom I asked to listen in on my behalf named John Koegel of New York City. Ms. Franklin was on vacation. Mr. Roberts said that the conversation would be subject to Federal Rule of Evidence 408 and we all agreed to that.
Following this conversation I entered the Second Life world and went to the parcel that had been named SLart Garden, and where the SLART signs had been. The name of the parcel had been changed and the signs were gone. 39. I do not know exactly how Linden arranged for the infringing material to disappear, or whether this disappearance is permanent. It had disappeared previously and then reappeared over a month later. [...]
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