October 13th, 2008 by Benjamin Duranske
Artist and “SLART” trademark-registrant Richard Minsky recently filed a letter brief (.zip, with exhibits) alleging that Linden Lab has failed to comply with a Temporary Restraining Order covering claims of use of “SLART” in Second Life. Linden Lab responded (.zip, with exhibits). The court has not yet ruled.
For the full background of this case, see VB’s ongoing coverage of the SLART trademark lawsuit. In brief, Minsky is suing Linden Lab, Second Life user ‘Victor Vezina,’ and past and present Chairmen of Linden Lab’s Board of Directors Mitch Kapor and Philip Rosedale over use of Minsky’s registered trademark “SLART” in Second Life. Minsky is representing himself.
In the letter brief, Minsky refers the court to an email he sent to Linden Lab (.pdf) in September stating that Second Life user ‘Tate Watanabe’ was infringing Minsky’s SLART trademark via an object called “SLart Show Viewer” in Second Life. The object, according to Minsky, could be found at Rezzable’s Cannery (SLURL). The dispute over this object is likely to attract a fair bit of attention, as Rezzable is one of Second Life’s best-known content creation companies, responsible for the popular Greenies build, among others.
Minsky’s brief includes a screenshot (below, top) which, while only available in photocopied black and white via the court’s document retrieval system, clearly shows exactly what Minsky describes. Minsky also provided Linden Lab a Cease and Desist Order (.pdf) which he asked Linden Lab to transmit to ‘Watanabe.’
The Cease and Desist Order that Minsky asked Linden Lab to transmit to ‘Watanabe’ states: “You can use ‘SL art’ to describe art made in-world, but not the combined mark ‘slart.’ The use of the mark ‘slart’ (or SLart or SLArt or any variant) is only for activities, products and services that I own or license.”
Linden Lab refused to transmit the order to ‘Watanabe.’ Linden Lab’s emailed response (.pdf) to Minsky states that “Linden Lab did not locate this use either in the Second Life region ‘Cannery Rezzable’ … or after searching for the use under the ‘All’ search tab of Second Life search.” The allegedly infringing object is not currently there (see image right, bottom).
Linden Lab also asserts that because the use of the registered term in the “SLart Show Viewer” object was not “one word with all letters depicted in a uniform size, font and color” Linden Lab was also within its rights declining to transmit Minsky’s Cease and Desist Order to ‘Watanabe’ on those grounds.
Minsky’s letter brief attacks both of these arguments, and Linden Lab responds. Excerpts from both parties’ arguments follow.
First, Minsky argues that “[a]ccording to the TRO, my providing the screen shot and the information that I provided in Exhibit A, with the Notice to User, is sufficient for Linden to send the Notice to User within two days of my reporting the alleged infringement. Linden’s failure to find the infringing use was irrelevant.” He provides real-world parallels, and also points out that Linden Lab must have backups that would establish his allegations.
Second, Minsky argues that Linden Lab is wrong to reference the paragraph in the Temporary Restraining Order stating that actionable uses must be “one word with all letters depicted in a uniform size, font and color” as grounds for not transmitting Minsky’s Cease and Desist Order. Minsky observes, “The use of ‘SLart’ in the reported use is entirely in upper and lower case letters of the same font. The letters are all the same size, and they are all the same color. Case is not specified in the parameters of the TRO. Style is not specified in the parameters of the TRO.” (Emphasis in original.)
Minsky also asks a question that may have occurred to VB readers: “Is Linden singling me out for this kind of treatment because they are upset that I have the SLART trademark and they fear it interferes with their claim to anything with the letters SL in it? Or do they do this to every trademark owner?”
Linden Lab responded to Minsky’s arguments (.zip, with exhibits, linked in first paragraph, above). Linden Lab argues that “[u]pon receipt of the notice, which provided a screen shot of the location which Plaintiff had apparently captured the day before, and within less than one hour of receipt of that notice, Linden searched for the use Plaintiff identified, both at the location identified in Plaintiff’s notice, and in Second Life search under the ‘All’ tab. The use Plaintiff identified was not present at the location he identified and did not appear in the Second Life search results.”
Linden Lab argues that “Plaintiff is wasting this Court’s time by presenting to this Court a dispute about an alleged infringing use that has ceased to occur.”
Regarding the fact that the Temporary Restraining Order does not specify a uniform case for the typeface employed in allegedly infringing uses, Linden Lab states that “lower-case letters appear in a smaller size than upper-case letters.” Thus, Linden Lab argues, a use such as “SLart” does not trigger an obligation under the TRO, because the TRO requires use in the form of “one word with all letters depicted in a uniform size….”
It is not clear exactly what relief Minsky is seeking, but presumably, Minsky wants the court to order Linden Lab to send ‘Watanabe’ the Cease and Desist Order Minsky provided in this instance, and to clarify that the TRO requires Linden Lab to transmit future Cease and Desist Orders to users regardless of whether the alleged infringement remains in-world when Linden Lab investigates similarly documented future complaints.
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