Linden Lab Files SLART Answer, Counterclaims; Seeks Permission from Court to Terminate Minsky’s Account
October 20th, 2008 by Benjamin Duranske
Linden Lab has filed an Answer and Counterclaims (.zip, with exhibits) responding to SLART trademark-registrant Richard Minsky’s Complaint.
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.
The paragraphs of Linden Lab’s Answer responding to Minsky’s claims, as with all formal Answers in U.S. legal proceedings, merely respond with admissions or denials of each assertion in Minsky’s Complaint. Linden Lab’s Counterclaims, however, shed some light on its strategy in this case.
Interestingly, Linden Lab is actually seeking, as part of its relief, a declaration from the Court that Linden Lab would be within its rights to terminate Minsky’s account. According to the Terms of Service, of course, “Linden Lab has the right at any time for any reason or no reason to suspend or terminate [a user's] Account,” but it appears that Linden Lab is playing it safe here, both from a legal and a customer-relations standpoint.
Excerpts from the Counterclaims follow.
Linden Lab claims:
60. In addition to its SECOND LIFE mark, Linden has adopted and used the trademark SL in connection with offering its services, by, among other things, displaying the mark SL on its website and in periodicals distributed throughout the United States.
61. In addition, Linden has adopted related marks that incorporate the SL mark.
62. The mark SL has become widely known and associated with Linden’s Second Life virtual world service and, as a result, embodies the substantial goodwill that Linden has accumulated in the marketplace in connection with offering its services.
63. Accordingly, the SL mark is a valuable asset of Linden.
64. Over the years, many of Linden’s devoted fans who were active in Linden’s Second Life virtual world have also used SL alone or in combination with generic terms to refer to Second Life in connection with their activities. For example, Second Life residents used SL plus the generic term “art” to identify their activities concerned with the creation, display, promotion and sale of art in the Second Life environment.
65. On or about June 5, 2007, Linden filed an application with the United States Patent and Trademark Office (“PTO”) to register SL as a trademark for use in connection with providing the Second Life virtual world service. That application, Serial No. 77198345, was examined and approved by the PTO and was published for opposition on September 16, 2008.
66. In or about November 2006, Minsky registered as a user of Second Life and began to engage in art-related activities in the Second Life virtual world.
67. In order to communicate to others that his activities concerned art in the Second Life environment and to benefit from the acclaim and goodwill that the Second Life virtual world enjoyed among the public and that is embodied in the SL mark, Minsky, as others had done before him, began to use in interstate commerce Linden’s mark SL in combination with “art.”
68. Unlike others, however, Minsky formed the intention to usurp this combination of SL and “art” and to attempt to gain exclusive rights in it.
69. Toward this end, on or about March 22, 2007, Minsky filed an application with the United States Patent and Trademark Office (“PTO”) seeking to register SLART as a trademark in connection with his art-related activities.
70. Minsky attached to his application an exemplar of his use of SLART reflecting the tagline, “a critical review and journal of the arts in Second Life.”
71. Minsky falsely claimed in his application that he was entitled to the exclusive use of SL plus ART and that he was not aware of others entitled to use the term in commerce.
72. Minsky also falsely claimed that he was using SLART on a wide variety of services.
73. The PTO initially refused Minsky’s application, correctly observing that the “proposed mark merely describes the feature of applicant’s services,” and that “the term ‘SLART’ is commonly used to describe art within the online world Second Life.”
74. In an effort to overcome this refusal from the PTO, Minsky submitted a response falsely claiming that SLART as he had used it did not refer to art in Second Life but instead was a combination of terms of such as “slut” and “fart,” and pointed the Examiner to an online, user-generated dictionary.
75. In reliance on these false statements, the PTO issued a registration for SLART.
76. Despite Linden’s notice to him that it objects to his use of SLART, Minsky has persisted in using the mark, including in connection with holding himself out as an expert on the Second Life virtual world in order to promote his own commercial activities and to benefit unjustly from the acclaim and goodwill that Linden enjoys as a result of its Second Life online service, and has embarked upon a campaign of harassment and intimidation in an effort to force other users of the Second Life service to cease use of the combination of SL and “art.”
77. Minsky has been using Linden’s SECOND LIFE and SL marks without permission and has taken advantage of Second Life’s popularity to garner attention and monetary gain.
91. Minsky’s alleged SLART mark wholly incorporates Linden’s SL mark which in turn is widely recognized in the marketplace as a designation of SECOND LIFE and Linden’s
SECOND LIFE services and Minsky’s use of SLART and his campaign of intimidation against users of the Second Life service is likely to cause an association with the SECOND LIFE mark that impairs the distinctiveness of Linden’s famous SECOND LIFE mark, weakens the connection in consumers’ minds between the SECOND LIFE mark and Linden’s services, and tarnishes the SECOND LIFE mark. Minsky’s use of SLART is therefore likely to cause dilution by blurring and tarnishment.
Linden Lab pleads:
- FEDERAL TRADEMARK INFRINGEMENT
- FEDERAL TRADEMARK DILUTION
- UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN
- COMMON LAW TRADEMARK INFRINGEMENT
- COMMON LAW UNFAIR COMPETITION
- CANCELLATION-FRAUD [Regarding the SLART registration.]
- BREACH OF CONTRACT
Linden Lab seeks the following relief:
143. That Minsky’s Complaint be dismissed with prejudice;
144. That the Director of the PTO be ordered to cancel Minsky’s United States Trademark Registration No. 3399258 for the mark SLART and to make the appropriate entries upon the PTO’s records reflecting the cancellation;
145. That Minsky, his attorneys and representatives and all of those in privity with or acting under his direction and/or pursuant to his control, be preliminarily and permanently enjoined and restrained, from directly or indirectly:
(a) Using the mark SLART, or terms, marks, symbols or indicia confusingly similar to the SLART, SECOND LIFE and SL marks, in connection with the production, advertisement, promotion, distribution, offering for sale or selling of services related to art.
(b) Performing any acts or using any service marks, trademarks, names, words or phrases that are likely to cause confusion, to cause mistake, to deceive or otherwise mislead the public into believing that the services or goods of Defendant originate with, or are affiliated with, associated with, or sponsored by Linden;
146. That Minsky be required to file with the Court, and serve on Linden, a statement under oath evidencing compliance with any preliminary or permanent injunctive relief ordered by the Court within fourteen (14) days after the entry of such order of injunctive relief;
147. That Minsky, his attorneys and representatives and all of those in privity with or acting under its direction and/or pursuant to its control, be required to deliver up for destruction all advertising, signs, labels, wrappers, packaging, and any other materials bearing the SLART mark;
148. That the Court issue a declaration that Linden is within its rights under the Terms of Service to terminate Minsky’s Second Life account.
149. That Minsky be ordered to pay Linden monetary damages for the harm resulting from his infringement and dilution of Linden’s marks, as described above, in an amount to be determined at trial;
150. That damages be trebled and that Minsky be ordered to pay Linden’s attorneys’ fees on the basis that this is an exceptional case.
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