Real Trademarks Used in Virtual Worlds

In April 2009 the world's largest maker of stunrange from 64 to 200 million USD -- but
guns ("Company 1") sued the owner of one ofwhatever it is, it's not small.
the most popular "Virtual World" web sitesWith the commercialization of Virtual World by
("Company 2"). Company 2's web site enablesreal companies, concern about the protection of
players, called Residents, to interact with eachintellectual property rights has grown. Copyright
other through avatars. Residents can explore,owners can protect their rights through the
meet other residents, socialize, participate inprocedures of the Digital Millennium Copyright Act
individual and group activities, and create and(DMCA), which Virtual World states it will enforce.
trade virtual property and services with oneThe DMCA requires service providers upon notice
another, or travel throughout the world, whichfrom copyright owners to take down and ban
residents refer to as the grid. In its lawsuit,repeat infringers. It is to Virtual World's benefit to
Company 1 claimed that Company 2 and otherconform with the DMCA or otherwise it too may
defendants damaged Company 1's reputation andbe subject to liability for its users' infringing
hurt its sales by allowing virtual weapons to beactivities.
sold online under its brand name. Not only didUnfortunately, there is no such protections for
Company 1's complaint alleged that Company 2trademarks. The DMCA does not apply in this
was infringing its trademarks but also that it wasarea, only the provisions of the Lanham Act,
damaging its reputation by selling the virtualwhich prohibits trademark infringement. Although
weaponry in the same online stores that includedVirtual World could enforce trademark rights by
pornographic content.application of its Terms of Service, it specifically
The case was dismissed in May 2009, presumablystates that users are responsible for complying
because the parties settled their dispute.with intellectual property law but has no provision,
Nonetheless, the lawsuit should raise concernslike that of Facebook, for reporting violations.
about policing trademarks in the digital world. TheApparently, however, there are violations aplenty.
law imposes on trademark owners the duty toOne commentator observed:
police their trademarks. Should your trademark be"Ultimately, [Company 2] the creator of [Virtual
infringed and you permit the infringement toWorld], relies on the vigilance of SL community
continue without action, you may be faced withresidents to monitor trademark and copyright
an argument that you have abandoned yourabuses. Yet one boutique still sells a virtual
trademark. Traditionally, policing your trademarksreproduction of the entire Ikea catalog. Virtual
meant monitoring online and offline publications andcomputers with the Apple logo have been sold
other places where your trademark may bewithout Apple's permission. Residents walk the
infringed. Now that actual commerce is occurringstreets of [Virtual World] wearing knockoff
in virtual communities such as Virtual World, theclothes and are solicited by black-market vendors
scope of policing has widened. The purportedselling entire lines of counterfeit goods. [Company
population of this particular Virtual World is more2] may not actively be seeking out offending
than 2 million although opinions differ. Nevertheless,material, but many of the infringing acts are so
there are a lot of people "playing the game" andrampant and blatant that ignoring these abuses
various companies from Reuters to IBM have setpractically amounts to willful ignorance." Chilling
up storefronts in Virtual World. It's unclear whatEffects.Org
the annual GDP of Virtual World is -- estimatesSounds like the wild west so be vigilant.