September 15th, 2008 by Benjamin Duranske
The first few weeks of the SLART trademark lawsuit between artist/”SLART” trademark registrant Richard Minsky and Linden Lab, et. al. have been busy, and culminated in a Temporary Restraining Order (TRO) by Consent (.pdf) governing Linden Lab’s short-term response to complaints about the use of “SLART” in Second Life.
Minsky had originally sought (and was granted) a TRO which included provisions directing Linden Lab to stop “hiding the identities of users of its service who infringe on the SLART trademark” and stop “harassing Plaintiff with threats and/or directives to stop contacting other users,” but the Court reversed its decision after a hearing on September 10 via a docket entry, “Motion for TRO filed by Richard Minsky … The Court RESERVES decision.” The parties subsequently agreed to the current TRO by Consent.
Unless the case is terminated, the TRO by Consent will remain in force until the judge decides whether to grant a preliminary injunction, likely in late October. If granted, the preliminary injunction would then replace this TRO and remain in force until the case concludes.
For the full background of this case, see the site’s ongoing coverage of the SLART trademark lawsuit. Excerpts from the TRO and the minutes of the September 10 hearing follow.
The Temporary Restraining Order by Consent specifies the following:
- In the event that Plaintiff identifies the use of a term in the Second Life virtual world which he believes in good faith is an infringement of SLART, the subject of U.S. Federal Trademark Registration No. 3399258 (“Plaintiff’s Registration”), and which is being used on or in connection with the services identified in Plaintiff’s Registration, Plaintiff may give notice of such alleged infringement to Linden Research, Inc. (“Linden”) by sending an email to email@example.com (“Notice to Linden”).
- Except as set forth … below, within two business days of receipt of a notice described … above, Linden shall forward the Notice to User to the Second Life user identified as the source of the alleged infringing use, shall advise the user that this Action is pending, and that, pursuant to this Order, the use must be removed pending the resolution of the Action. Linden will also provide confirmation to Plaintiff via email that his Notice to User has been sent to the email address on file for the user, along with the time and date of transmission. If, within three business days of providing such notice to the user, the alleged infringing use has not been removed from the Second Life virtual world, Linden shall remove the use.
- In the event that the alleged infringing use is anything other than the use of “SLART” as one word with all letters depicted in a uniform size, font and color, Linden may decline to forward Plaintiff’s notice to the user and shall within three business days of receipt of the notice advise Plaintiff that it has declined to do so. In the event Plaintiff desires to continue to pursue removal of the alleged infringement, Plaintiff and Linden agree that the parties shall submit the issue of whether the alleged infringing use should be removed to U.S. Magistrate Judge David R. Homer for resolution.
Alleged infringers’ personal information will not be given to plaintiff Minsky unless the court finds that it should be released on a case by case basis. The TRO specifies that “[i]n the event that Plaintiff seeks from Defendants the disclosure of any personal identifying information of a Second Life user whom Plaintiff alleges is making an infringing use, Plaintiff shall file a motion with Magistrate Judge Homer setting forth a prima facie case of infringement and detailing the reasons the requested disclosure is necessary.”
The minutes of the September 10 hearing before Senior Judge Lawrence E. Kahn (.pdf) reveal that key issues in this case are already finding their way before the court. From the minutes of the hearing:
Ms. [Janet] Cullum [of Cooley Godward, representing Linden Lab, Philip Rosedale, and Mitch Kapor] states that her client immediately took action – as soon as the plaintiff made them aware of the trademark infringement. She names an avatar and states that “he” is no longer posting as SLART. Mr. Minsky states that the infringement is taking place by more than 1 avatar at Second Life. Ms. Cullum states that there is no harm taking place here due to the removal of the trademark infringement taking place. Ms. Cullum further states that the trademark is invalid. The Court directs Ms. Cullum to focus her arguments on the infringement at this point. She states that it is unclear if the use of his trademark in Second life is an infringement. Some users call their art “SL – art” which would not be an infringement. She states that she is willing to work with the plaintiff & the court on what to do if the combination of characters is defined as an infringement or not. [...] The Court recommends to the plaintiff that he retain counsel.
Briefs on the motion for a preliminary injunction will be filed shortly. Motions to dismiss and/or an answer to the Complaint and counterclaims are also likely in the near future.
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