Today, March 31, is the last day to register for the Virtual Law Conference in New York City, April 3-4. Registration ends at 11:59 eastern time (8:59 Pacific). Your registration fee for the conference also covers entrance to the “Virtual Worlds 2008” conference (which runs concurrently) and all associated events. According to the organizers, over 1100 people have registered from over 600 companies. If you register today, the cost is $895. On-site registration (if there is still space) will be available starting at 7:30 AM the first day of the conference, and will cost $1295.

Virtually Blind is a media partner for the conference, and I am one of the conference advisors and co-chairs, along with attorney Sean Kane. The conference will be keynoted by Steve Mortinger (IBM Systems and Technology Group VP and Associate General Counsel). Steve will be discussing “The Top Ten Things a Brand Should Know about Virtual Worlds.” The conference will also feature panels and presentations on the biggest issues in virtual law. I know a lot of VB readers are already planning to be there, but just in case registration slipped your mind, now is definitely the time. See you in New York!

After years of largely ignoring widespread use of its trademarks on everything from in-world groups to business web sites, Linden Lab recently announced the launch of the Second Life® Brand Center, which features a new set of explicit, fairly restrictive guidelines regarding the use of the company’s trademarks.

Some residents are upset, and with at least some cause. There are a lot of very large groups and institutions with names that are implicated in this change in policy, most of which chose those names at least partly because Linden Lab did not appear to be interested in policing these marks until now. Organizations that potentially are subject to the new guidelines (if they have not secured written permission to use the marks) include the Second Life Herald, Reuters Second Life, Scripters of Second Life, the University of Second Life, Business Women of Second Life, the Arts Council of Second Life, Real Life Education in Second Life, Bisexuals in Second Life, and even the informal professional association I started in 2006, the Second Life Bar Association. A quick count of group names and web sites reveals thousands, if not tens of thousands, of instances of potential infringement.

Here are the highlights of the new guidelines, with a little explanation:

• Residents in good standing are allowed to use “SL” and “inSL” in business and organization names and domains as long as they are used with at least two generic nouns, or your own mark. So “SL Bar Association” is okay, but “SL Lawyers” is not. Using your own mark lets you get down to one word, so “Dell SL” is okay, but “Computer SL” is not. Acronyms of otherwise acceptable names can be used as domains.

• Residents are not allowed to register any trademark that includes SL in this context — which adds a whole new layer of complexity to the SLArt trademark registration issue that Thayer Preece, one of VB’s guest writers, covered in detail in January.

• Residents are not allowed to use the eye-in-hand logo or the term “Second Life” without written permission. I’m guessing that isn’t going to be easy to get, since Linden Lab appears to be taking steps to protect these specific trademarks now. Organizations with “Second Life” in their name may want to consider a name change or explore the written permission option, if they have not already.

• Finally, they say that they’d like you to put a ® symbol after “Second Life” and a ™ symbol after their unregistered trademarks (including Linden, LindeX, and SLurl) when you use the terms “in text,” and you’re also supposed to follow “Second Life” with a generic noun. For example, you are now asked to refer to “the Second Life® world…” instead of “Second Life.” This is widely misunderstood. The request is not enforceable against news organizations or most non-product-oriented blogs. It can only be enforced if there is potential brand confusion (e.g. in advertising for another product).

That last bullet regarding the is use of the ® symbol “in text” is confusing to a lot of people and is worth exploring a little further. It does not mean that every news story and blog post about Second Life needs to include these symbols. You only have to follow these requests when your use isn’t considered “nominative.” Basically, when brand confusion is possible — in advertising. The key is that use of the marks in news coverage and analysis is considered “nominative use,” and doesn’t require any license at all — so they don’t get to tell you how to use the words in that context. The AP Stylebook guidelines say that trademarked names should be capitalized in text, which is appropriate because it helps avoid genericide (and angry letters from lawyers) but that’s really all commentators and reporters need to do in text. Note though: like any other brand identifiers, blog banners, names, and graphics are subject to the rules pointed out in the other bullet points above.

While it is unfortunate that Linden Lab waited so long to do this, the reality is that they have the right, and probably the obligation, to police these marks. If they do not enforce their rights now, they risk an abandonment argument later.

One could actually argue that the four-plus years they’ve encouraged the use of some of these marks constitutes abandonment, though it’s not a strong argument. If one was in the mood to fight, a better argument would be “estoppel” — essentially, that because Linden Lab encouraged the use of the marks (e.g. in text accompanying their fansite toolkit) and people took action based on that, that Linden Lab can’t now change its mind without at least paying for the financial damage caused by the change. Lawsuits are expensive though, and the fight is probably not one that many Second Life-based organizations are going to be willing to take on.

My conclusion? Although there might well be a legal argument available if somebody wanted to try to make it, most users are going to be better off simply taking steps to move into compliance with Linden Lab’s new policy.

Toward that end, I will be asking the Second Life Bar Association to lead by example. Although I do not set the organization’s policy and my term as president recently ended, I will ask that the group (which is now headed by U.K. firm Field Fisher Waterhouse’s David Naylor, as Second Life Avatar ‘Solomon Cortes’) either seek written permission to use “Second Life” in our name, or else to consider using the name “SL Bar Association” to make sure we’re in compliance. I’ve secured “SL Bar Association” as a Second Life “Group” name in case that’s the route the organization takes. Other organizations with names that are potentially subject to this policy may want to consider securing the “SL” version of their group name as well before someone else grabs it. Happily, our domain name, slba.info appears to fall within the license for “SL.”

To its credit, Linden Lab has given organizations 90 days to analyze the policy and take any necessary steps before it begins enforcement.

March 28, 2008 – Edited to add information regarding potential estoppel claim.

Blizzard and MDY Industries have filed key motions in their lawsuit over the popular World of Warcraft automation program “WoW Glider” (since renamed “MMO Glider”). Exhibits include an expert report supporting Blizzard from Indiana University’s Edward Castronova (PhD, Economics) regarding the impact of Glider on World of Warcraft.

Substantial excerpts follow; here are the documents:

• MDY’s Motion for Summary Judgment (.pdf)
• MDY’s Statement of Facts (.pdf)
• Blizzard’s Motion for Summary Judgment (.pdf)
• Blizzard’s Statement of Facts (.pdf)
• Effects of Botting on World of Warcraft, Edward Castronova, PhD (.pdf)

MDY’s briefing refers to a rebuttal expert report countering Castronova from Koleman Strumpf (PhD, Economics) at the University of Kansas School of Business. I don’t have all the exhibits yet, but the report does not appear to have been filed with this round of briefing. My guess is it will be filed with MDY’s opposition brief. I will make it available here as soon as I acquire it.

Background of the MDY v. Blizzard Suit

Glider is a program that users run along with World of Warcraft. It automates key tasks in World of Warcraft, making it possible to play the game essentially unattended. Glider users can thus both harvest resources and generate high level characters without actually playing. MDY’s advertising material says that Glider helps users “escape the grind” of leveling and resource collection so that they can focus on play. Blizzard, on the other hand, says Glider disturbs the World of Warcraft gameplay balance, undermines the in-game economy, and ultimately costs Blizzard money.

MDY originally filed this lawsuit in federal court in Arizona seeking a declaratory judgment that MDY does not violate Blizzard’s intellectual property rights by selling the Glider program. Blizzard counterclaimed, alleging trademark and copyright infringement, as well as a handful of business torts. The case is now at the “Summary Judgment” stage.

Summary Judgment

For VB’s non-litigator readers, here’s a bit of background on summary judgment motions. In very basic terms, both sides get to put their best case before the judge in the form of written arguments and supporting material. The judge will grant a motion for summary judgment where there is no dispute about the facts, and where under those facts, one party is clearly entitled to win. This is simplified, of course — if you’re interested in the details the Wikipedia entry on Motions for Summary Judgment is pretty good.

Basically, MDY and Blizzard are both arguing that there is no dispute about certain facts, and that under those facts, the party making the motion is so clearly right that that party should win before the issue even goes to a jury. It sounds like a long shot, but claims are decided at summary judgment all the time. Both sides will respond to each other, and then there may be oral argument. Some judges rule quickly on these, and others take many months.

This is an important step in a lawsuit — a successful motion for summary judgment means a party wins on one or more issues without a trial. And even if the motions fail, a litigant learns a lot about the opposition’s position. Finally, since the judge usually grants or denies these motions with fairly detailed orders, the parties (and commentators) get a preview of the Court’s position on key issues that may come up at trial.

Excerpts from the documents follow. As always, keep in mind that these are advocacy documents, and thus only give you one side of the story. Also, as always, know that I don’t take a position on litigation strategy or provide substantial commentary on active lawsuits, for reasons explained here. VB will excerpt the oppositions to these motions when they are filed.

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I am pleased to announce that Virtual Law is available for pre-order through the American Bar Association’s website. It went to press yesterday, and will be published in April. Virtual Law will be exclusively available from the ABA for a month or so, and then will be released to brick-and-mortar and mainstream online booksellers.

Virtual Law: Navigating the Legal Landscape of Virtual Worlds is a practical guide to emerging legal issues associated with virtual worlds. While the book should appeal to attorneys interested in these spaces, I wrote it with a mainstream audience in mind and made a real effort to explain the issues using terms that readers can parse without a law degree. Content creators, virtual property owners, virtual world providers, and virtual world users who are curious about the legal ramifications of their in-world activity should all find it both useful and accessible. It is also designed to work well in an undergraduate or law school course curriculum, featuring “Open Questions” at the end of each chapter that can be used as discussion-starters or possible essay topics.

From the back cover:

This book is an introduction to the emerging and intriguing world of virtual law. It examines current cases and legislation impacting virtual world providers and users, and makes predictions about the future application of current law. It addresses the application of intellectual property law, criminal law, property law, contract law, securities law, tax law, and civil procedure. The author provides clear and practical advice on how to create a virtual world presence for your practice or for your clients with virtual world connections. The book also includes extensive appendices listing in-world and web-based resources.

If you are a member of the media, or if you teach a course where you would consider using this text, do not hesitate to shoot me an email. I’ll put you in touch with the ABA publicist, who can provide information about excerpts, bulk pricing, reprints, review copies, and interviews.