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“Get a Life” Trademarks in a Virtual World

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“Get a Life” Trademarks in a Virtual World E TUT I “GET A LIFE” TRADEMARKS IN A VIRTUA L WOR L D ST Prepared in connection with a Continuing Legal Education course presented at New York County Lawyers’ Association, 14 Vesey Street, New York, NY N scheduled for November 1, 2010. P ROGR A M CH ai R : Dyan Finguerra-DuCharme, Counsel, White & Case LLP P ROGR A M CO -SP O N SOR : NYCLA EMIPS Committee F ac U LT Y : David Stimson, Chief Trademark Counsel, Eastman Kodak Company; Barry Werbin, Partner and Chair of the Intellectual Property/ Technology Group, Herrick, Feinstein LLP 2 TRANSITIONAL AND NON-TRANSITIONAL MCLE CREDITS: NYCLA-CLE I This course has been approved in accordance with the requirements of the New York State Continuing Legal Education Board for a maximum of 2 Transitional and Non-Transitional credit hours; 2 Professional Practice. In addition to being accredited in the State of New York, this program has been approved by the Board of Continuing Legal Education of the Supreme Court of New Jersey for 2 hours of total CLE credit. Of these, 0 qualify as hours of credit for ethics/professionalism, and 0 qualify as hours of credit toward certification in civil trial law, criminal trial law, workers compensation law and/or matrimonial law. Information Regarding CLE Credits and Certification Get a Life! Trademarks in Virtual Worlds Monday, November 1, 2010 9:00 AM – 11:00 AM The New York State CLE Board Regulations require all accredited CLE providers to provide documentation that CLE course attendees are, in fact, present during the course. Please review the following NYCLA rules for MCLE credit allocation and certificate distribution. i. You must sign-in and note the time of arrival to receive your course materials and receive MCLE credit. The time will be verified by the Program Assistant. ii. You will receive your MCLE certificate as you exit the room at the end of each day. The certificates will bear your name and will be arranged in alphabetical order on the tables directly outside the auditorium. iv. If you arrive after the course has begun, you must sign-in and note the time of your arrival. The time will be verified by the Program Assistant. If it has been determined that you will still receive educational value by attending a portion of the program, you will receive a pro-rated CLE certificate. v. Please note: We can only certify MCLE credit for the actual time you are in attendance. If you leave before the end of the course, you must sign-out and enter the time you are leaving. The time will be verified by the Program Assistant. If it has been determined that you received educational value from attending a portion of the program, your CLE credits will be pro-rated and the certificate will be mailed to you within one week. vi. If you leave early and do not sign out, we will assume that you left at the midpoint of the course. If it has been determined that you received educational value from the portion of the program you attended, we will pro-rate the credits accordingly unless you can provide verification of course completion. Your certificate will be mailed to you within one week. Thank you for choosing NYCLA as your CLE provider! New York County Lawyers’ Association Continuing Legal Education Institute 14 Vesey Street, New York, N.Y. 10007 • (212) 267-6646 Get a Life! Trademarks in Virtual Worlds Monday, November 1, 2010 9:00 AM – 11:00 AM AGENDA Program Co-sponsor: NYCLA’s Entertainment, Intellectual Property & Sports Law (EMIPS) Committee Panel: Dyan Finguerra-DuCharme, Counsel, White & Case LLP ; David Stimson, Chief Trademark Counsel, Eastman Kodak Company; Barry Werbin, Partner and Chair of the Intellectual Property/Technology Group, Herrick, Feinstein LLP 8:30 AM – 9:00 AM Registration 9:00 PM – 9:10 PM Welcoming Remarks 9:10 AM – 11:00AM Panel Discussion Trademark Basics Trademark Infringement Dilution Introduction to Virtual Worlds Trademarks in Virtual Worlds Legal Issues in Virtual Worlds Copyright Issues Remedies Caselaw Limited How Brand Owners are dealing With Virtual Worlds 11:00 AM Questions and Answers New York County Lawyers’ Association Continuing Legal Education Get a Life! Trademarks in Virtual Worlds Monday, November 1, 2010 9:00 AM – 11:00 AM Program Co-sponsor: NYCLA’s Entertainment, Intellectual Property & Sports Law (EMIPS) Committee Panel: Dyan Finguerra-DuCharme, Counsel, White & Case LLP ; David Stimson, Chief Trademark Counsel, Eastman Kodak Company; Barry Werbin, Partner and Chair of the Intellectual Property/Technology Group, Herrick, Feinstein LLP Table of Contents Outline 1 Introduction to Virtual Worlds 2 Bibliography 3 INTA Bulletin: Trademarks in Virtual Worlds 4 Faculty Biographies Get A Life! – Trademarks in Virtual Worlds November 1, 2010 Sponsored by NYCLA EMIPS Committee Dyan Finguerra-DuCharme Counsel, White & Case LLP David Stimson Chief Trademark Counsel, Eastman Kodak Company Barry Werbin Partner and Chair of the Intellectual Property/Technology Group, Herrick, Feinstein LLP Outline 1. Welcoming Remarks / Introduction of Panel Trademark Basics 2. Trademark Basics A. What is a Trademark? i. A word, symbol, slogan, product or packaging design that identifies a specific product and distinguishes it from others in the marketplace B. Functions of a Trademark i. Indicates the source or origin of goods or services ii. Assures consumers of the quality of goods bearing the mark iii. Creates business goodwill and brand awareness C. Federal Registration i. Requirements: 1. Use in Interstate Commerce 2. Use with Product or Service ii. Benefits: 1. Constructive Notice of Ownership Rights 2. Nationwide Constructive Use 3. Prima Facie Evidence of Validity and Ownership 4. Incontestability after 5 Years 5. Federal Jurisdiction 6. Basis for Foreign Country Registration 7. Recordal with US Customs 8. Treble Damages and Attorneys Fees 3. Trademark Infringement A. Goal: prevent consumer confusion B. Lanham Act standard: Prohibits the use of a trademark in commerce which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with a trademark owner, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by the trademark owner C. Usual factors considered for likelihood of confusion i. the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings) ii. the similarities of the goods and services involved iii. the strength of the plaintiff's mark iv. marketing channels for the goods v. any evidence of actual confusion by consumers vi. the intent of the defendant in adopting its mark vii. the degree of care likely to be exercised by the consumer viii. the likelihood of expansion of the product lines. 4. Dilution A. Definition: Dilution is the whittling away of the value of a famous trademark when it is used to identify products which are different from those sold under famous trademark. B. TDRA Standard: Prohibits the use of a mark that is likely to cause dilution. i. Blurring ii. Tarnishment C. Does Not Require Likelihood of Confusion D. Does Not Require Competition 5. Introduction to Virtual Worlds A. Definition i. Online computer-simulated 3D fictional worlds ii. Avatars B. Genres i. MMORPG ii. Virtual non-game computer-generated worlds iii. Education / philanthropic / political C. Distinguish from social networks D. Economic models i. Subscription fees ii. In game/world commerce payments iii. Micro-payments E. Policies and Terms of Use F. Second Life i. Commerce: SL promotes “making money” ii. Linden dollars tied to US dollars iii. SL marketplace iv. Branding guidelines 6. Trademarks in Virtual Worlds A. Use of trademarks by trademark owners themselves in the virtual world B. Use of real world marks by SL users in UGC and “search’ results C. Trademarks/trade dress that exist only in SL 7. Legal issues in Virtual Worlds A. Registering Trademarks – in virtual worlds and the real world i. "Virtual" trademark offices and registration ii. PTO ID Manual includes descriptions for virtual worlds in Classes 9, 35 and 42 iii. USPTO has issued registrations for virtual world computer services 1. U.S. Reg. No. 3,531,683 for AIMEE WEBER avatar 2. U.S. Reg. No. 3,483,253 for the mark SexGen B. Trademark Infringement Analysis i. Is there "use in commerce"? 1. Marvel v. NCSoft ii. Is there a likelihood of confusion? iii. Secondary liability for providers 1. Eros LLC v Linden Research, Inc. C. Dilution Analysis i. Is there Blurring or Tarnishment? ii. Defenses 1. Fair Use 2. Non-Commercial Use 3. Free Speech / Parody / Comment D. Jurisdiction i. Federal or State Court? ii. Personal Jurisdiction 1. State Long Arm Statutes 2. Due Process: Sufficient Minimum Contacts iii. Internet Jurisdiction Categories 1. Active Business -- Jurisdiction 2. Information Exchange -- Possible Jurisdiction 3. Passive Websites -- No Jurisdiction 8. Copyright Issues A. Scope B. Protection / Registration C. DMCA take down procedures 9. Remedies A. Take down notices B. Damages -- conversion from Linden dollars? C. Injunctions D. Licenses E. Correct advertising 10. Caselaw limited A. Eros LLC v. Leatherwood B. Eros LLC v. Simon C. Taser International v. Linden D. Minsky v. Linden 11. How Brand Owners are Dealing With Virtual Worlds A. Third Party Requests to Use Owner's Trademark B. Permissions C. Licenses i. Coca Cola D. Use of Own Trademarks i. Aeron chairs ii. Gibson guitars iii. Storefronts / Islands iv. Contests v. Colgate script E. Brand Awareness F. Product Sales G. Marketing and Cross-Promotion H. Viral Marketing I. Similarities to Social Media Advertising J. What to Tolerate 12. Q&A Get A Life! – Trademarks in Virtual Worlds November 1, 2010 Sponsored by NYCLA EMIPS Committee Dyan Finguerra-DuCharme, Counsel, White & Case LLP David Stimson, Chief Trademark Counsel, Eastman Kodak Company Barry Werbin, Partner and Chair of the Intellectual Property/Technology Group, Herrick, Feinstein LLP Bibliography Cases 1.
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