Splitting Hairs Over Trademarks

Pirates ahoy!Laurap Linden thankfully replied on the Official Second Life® Blog to our plea for clarification on some of the more subtle issues of Linden Lab®’s policy on the trademark usage.

In fact, the most important question was not exactly about the trademark usage; after all, the complete guidelines for their usage are spelt out on their Second Life Brand Center. Amy Witherite of EW Lawyers has said that, any lawyer should be able to read through all of those and say what is allowed and what is not, it is not ambiguous or overbearing to combrehend. Similarly, graphical designers — such a large part of Second Life’s population — are by now used to similar guidelines for their other customers; as well as communication and marketing specialists. There is nothing new on the guidelines for anyone that is used to deal with them. For the rest of us, Linden Lab took pains to write a reasonably detailed FAQ, which should be enough for anyone wishing to use LL’s trademarks on their texts.

No, the two most important questions were about banning avatars from non-compliant users and “grandfathering” the existing use of the trademarks in the past four years thanks to a gentler policy.

Clarification did go a long way

Captain Jack Sparrow blows kiss to GwynLaurap Linden did go a long way to establish Linden Lab’s position regarding the use of their trademarks outside of Second Life — a service where, of course, the Terms of Service apply. Like Tateru Nino so well pointed out at Massively, what they said on the ToS, and what they publicly claimed were at odds. Laurap now makes it clear: yes, Linden Lab will ban you if ultimately you refuse to comply with their trademark usage guidelines.

10. Why is the trademark policy in the Terms of Service?

The Terms of Service are the conditions under which Linden Lab offers the Second Life services. One of those conditions is adherence to our trademark policy, meaning that any use of our trademarks–both inworld and outside of Second Life–must comply with our policy.

But they also introduced a new precedent:

For trademark issues, banning would be a last resort. We’d issue multiple warnings beforehand, and even afterwards, Residents would have an opportunity to request reversal of the ban by sending us a written appeal.

This is a new procedure for banning. As most of the people who have been banned know, there are certain cases where banning is automatic: griefing, minors on the Adult Grid, and so on. Other cases get fair warnings first, suspension next (for a day or three), then banning for a week or two, and finally a permaban.

Depending on how serious the offense (usually a violation of the Community Standards), LL might be prone to ban first and give you an opportunity to appeal later. It was interesting to understand where exactly Linden Lab was going to fit their “trademark banning”.

We know now that they won’t “ban first, ask questions later”. They’re still threatening to ban if there is no other possible choice. Make no mistake — on a tug-of-war, Linden Lab will always have the strongest hand — but at least they’re being a bit more reasonable about it. And the precedent is there.

Partial “grandfathering”

Another of the issues was about existing content and not future one. By “content” I mean the blogs, articles, forums, papers, machinimas, images, presentations, and all sort of promotional material, written and produced by the residents in their effort to push ahead Second Life as the ultimate virtual world. Again, Laurap was generous:

4. Some bloggers have expressed concern about having to go back and change references to “Second Life” in blog posts they wrote before the updated policy. Do they have to do this?

We’re not going to ask bloggers to go back through blog posts predating the policy to change how they’ve described Second Life.

This is naturally good news — four years of content created by thousands of users is not easily changed, and Google caches old content too. Although the comment from Laurap explicitly refers to “bloggers” I’m sure this will also apply to other things as well (namely, comments on Flickr, for example!). Most of these are timestamped, so it’s easy to figure out if they were written/created under the former guidelines.

Others are harder to track down: imagine a presentation about SL that was sent to a book publisher for review last June. The book comes out now. What will Linden Lab do about it? It might involve some complex negotiations and a lawyer to assure LL that the next edition of the book (assuming it gets a second edition) will probably correct the usage of LL’s trademarks. This is a bit more tricky — LL could very correctly assume that the book’s publishing date is the one that decides which policy to apply, and effectively prevent a non-compliant book to be launched.

Bye-bye domains…

Where Linden Lab is adamant is on the abolishment of all names (including domain names), products, services, etc. referring to Second Life and using any of LL’s trademarks, both the old ones (the eye-on-hand logo, Second Life®, Linden Lab®) and the newer ones (“SL”, “SL Grid”, and, who knows, if they’re able to register them, “Grid” and even “Second”!). These will have to go — no matter how “old” they are and how established the residents’ own claims on the names (notably, The Second Life Herald, which I believe even predates the “Fansite Toolkit” policies…).

In truth, these were always forbidden. Not even the “Fansite Toolkit” allowed them. The logo could only be used as part of pre-approved banners clearly advertising LL’s products and services, to link back to LL’s sites. This was actually quite clear. People still abused the usage of the trademarked names and Linden Lab hardly did anything to prevent them. So both sides were at fault here: on one side, residents have abused and misinterpreted the guidelines. On the other side, LL was reluctant to act upon it, except in extreme cases (companies misrepresenting themselves as affiliated with LL, when no such affiliation existed). LL was probably reluctant to spend money and labour on the thousands of cases where a transgression occured, but where the intent of the residents was just to promote LL’s trademarks.

Still, it’s understandable that LL’s lawyers are now not so happy about the “dilution” and “genericide” effects that occured because LL failed to prevent them to happen in the past four years. This stance is understandable, specially because, in truth, LL never “allowed” the misuse of their trademarks. They simply failed to act upon the transgressions, and are enforcing them a posteriori.

Things are not so bleak as they look. SL News Network or SL Ballet Troupe will very likely continue to exist and use those names (SL Education Blog, for instance, is an example of proper usage, in Laurap’s own words). They might even be able to use a domain name with “SL” somewhere in it. It might require some exercise in English grammar to understand what is a “generic noun” (which can be used in products, names, and services using “SL”) and a “proper noun” (which can’t).

It seems to leave out things like http://secondlife.reuters.com or http://www.massively.com/category/second-life. Both could be changed to http://sl.reuters.com or http://www.massively.com/category/SL. These will definitely be some of the most trickier cases to deal with; LL, however, has pledged to work with these cases to smoothly encourage the transition (often, paying for the new domain names out of their own pockets and allowing the redirection to exist for a while — at lest until the “grace period” is over — to keep those 24 million links on Google still operational).

In case of doubt, the best way is to ask first and save yourself some trouble later, by sending an email to [email protected].

So, no “grandfathering” of old domain names. You’ll have to change them, one by one.

Restricting freedom of speech?

Another confusion that has arisen with this issue was about the way Linden Lab “limits” how we refer to their trademarks, e.g. we have to say “the Second Life® world” or “Second Life® residents” when mentioning their trademarks, but can’t simply say: “I found something so cool in Second Life today!”.

I believe that this is actually a non-issue, just wrongly misrepresented by both sides. LL’s “legalese” is not always clear enough, and they tended to imply that we have to put the silly ® and ™ symbols everywhere — which, really, they never said, but it was what “everybody” (including some Lindens!) assumed.

More serious is the issue about freedom of speech, i.e. “disparaging” use. So if I have a blog with SL-related articles, which clearly show the “inSL” logo, comply to the trademark guidelines, do I have the right or not to say “Second Life sucked today; nothing worked; teleports failed”?

Well, the guidelines have also been clarified. If it’s clearly a parody, it’s fine. If the site is purposely distorting facts in order to get people to quit SL, sell their islands, and go away — thus incurring in LL’s financial loss — it’s not ok. But — this is exactly what happens with any journalist when writing an article. “Get your facts straight” is a fundamental issue for all serious journalists. Bloggers are not different. If you are misrepresenting the truth, you’re facing a libel or defamation suit. That never changed. What LL further adds to their policies is that you cannot use their trademarks when defaming LL and incurring them in financial loss as part of your words.

Now this is more than reasonable. If you wish to open up a site spreading lies, fact distortions, “opinions” that have no connection to facts, well, you’re welcome to do that. Just don’t use LL’s trademarks. Don’t use the inSL logo. Stick to your “opinions” but don’t drag LL’s name into the mud.

On the other hand — emitting considered opinions based on facts is something completely different. An article on a clearly-labeled Second Life fansite, where a comment is made on how poorly a resident was treated by LL’s customer service, and with proof of the fact (chat logs, transcripts, snapshots, etc.) is just the exercise of free speech. If LL is hurt by the facts, it’s their problem. Misrepresenting the facts to enhance your case — and pushing other residents to “believe” you and cancel their accounts — is out of the question.

This is a matter of common business sense. Any reasonable company will naturally be open to criticism, specially if it’s fundamented, and addressing LL to fix what’s wrong. We can see how open-minded LL is about the comments made on their own blog — almost all of which are, in fact, completely unreasonable, unfundamented, and have no relevance whatsoever to “facts”, but stem mostly from emotional reactions to issues that people can’t or won’t understand. LL still publishes the comments! So I believe that what LL is trying to achieve is to prevent the “Second Life Haters Group” with a huge community of participants with the only motivation of getting people to leave SL and go elsewhere. Speaking for myself, I can certainly understand that. Hopefully, however, they’ll apply their rule of “ask first, ban later”, since in many cases, commentaries might be based on what is perceived as a fact and what is reality. Let me give you an example: people complain that WindLight is terrible for their computers, because “all their friends have noticed a drop in performance, more crashes, terrible difficulties in logging in, etc.” Now all these people set up a site where they gather all residents with problems with WindLight®, and claim, very loudly, that “Second Life is a fraud, and Linden Lab is just after your money — nothing works as it should! Give up your accounts, make them suffer by dropping your land and go away.”

When in reality Linden Lab does constant monitoring and gathers metrics and statistics that can factually prove that the SL client using WindLight is actually much better than the non-WindLight one. The issue is that the only ones complaining are the ones with problems! People are much more prone to complain when things don’t work for them than to praise LL when they work much better. So this would be a misrepresentation of facts — because, in reality, WindLight is better and LL can prove that — which could lead to a financial loss to LL. They would be wise to ask the writers to stop publishing slander and stick to the facts: yes, WindLight has problems for some users, but the majority of users, on average, have better results, and LL can exhibit the statistics to prove that fact.

I agree that the dividing line is not clear, and LL has reserved the right to decide where this line actually is. I would, however, bet that they will only act if they can also prove that certain misrepresented facts are, indeed, causing severe financial loss to LL. And, like any other company, they’re fully entitled to defend themselves if they believe that slander, libel, defamation, or any other mispresentation of factual truth is hurting their business.

This doesn’t mean that people like myself can’t continue to complain, for instance, that LL’s communication should be better 🙂 (and yes, I can factually prove that their communication is not as good as it should, by providing, if pushed, a reasonable number of cases where RL media had no way to get information out of LL themselves — or, better, from Lewis PR, their agency — and had to rely upon bloggers to get their facts). LL might not like to read this, but, alas, that’s freedom of speech. A good company will strive to make better and get their customers happy, not sue them over “facts”.

Should we continue to insist?

Captain Jack Sparrow hugs GwynA few bloggers were clearly not happy about Laurap Linden’s statement. In fact, it seems to reaffirm what we dreaded: that LL would, indeed, enforce the ToS, as a last resort, if there was no other chance to get an unruly blogger to comply. They also made clear that section 4.4 of the ToS will not be removed or changed. It’s part of life (or rather, Second Life), and we’ll have to live with it.

It also dumps the whole “grandfathering” issue into the trash can. There will be no grandfathering of domains; existing blogs/websites/third party sites/web-based services will have no choice but to comply, whether they wish it or not. Domain names will have to change. The overall wording and layout of SL-related websites will have to adhere to the guidelines. While some content written in the past will not be held against bloggers, new content will need to adhere to the guidelines.

LL is effectively fighting aggressively against dilution and genericide, even if in some cases they’re gentler than it seems (namely, allowing a restricted inclusion of “SL” on your blog/organisation/in-world service, as long as you don’t register it as a trademark). They will accept few or no exceptions. It means that the fight, if it is taken further, will enter a legal battle — and not merely a PR battle.

So first I would like to personally thank (once more), the legion of bloggers that have supported the “push” for Linden Lab to publish a clarification. Unlike what so many claimed, it’s true that the RL media gets their news from bloggers and companies operating in SL — these are truly the ones pushing “Second Life” to the mainstream and raising awareness. It’s obvious that the media will publish “bad news” first — so it’s important to keep the message clear. The “strike” — no matter what the effect — was just a convenient way to raise the attention to the issue (“bloggers are not happy”). Linden Lab reacted to the clarification, and personally, I’d like to thank Laurap Linden (and probably a lot of other Lindens, too, including their legal advisors) for the time spent in publishing that article. Most of the issues were, indeed, addressed, made clear, reinforced, and doubts dispelled. LL also confirms with this “More on Trademarks” post their general “common sense” stance, as opposed to the stern and ruthless legalese on the Second Life Brand Center.

However, it’s clear that people are still not happy about the results. A good example is the definition of what Second Life actually is. I’m sure that LL’s legal advisers will say it’s a service of Linden Lab, provided over a product of Linden Lab (“The Second Life Grid”), and thus a trademarked brand used in a copyrighted software framework.

Some Lindens claim otherwise — specifically, one Linden that will remain anonymous, because she (very rightfully) protests that people tend to quote her out of context 🙂 But I might quote Philip “Linden” Rosedale in May 2004 on an interview to Wired — “I’m not building a game. I’m building a new country”. Lindens are fond of their (trademark) motto: “Your World. Your Imagination.”™ which still figures on their main site. They also concede that their software and hardware, without any content, and people to create that content, is basically worthless (or as worthless as any other of the million of software platforms allowing the building of virtual worlds which just have a handful of users).

They also recognise that “Second Life” defines more than a sum of the parts. It’s a platform, sure, since it’s embodied in software, hardware, and networking technology. It’s also content — Second Life is the virtual world we see and share together. It is, however, mostly people. And this is the tricky part: if Second Life becomes a concept that describes how people use a technology to create a community, things become complex when trying to trademark the name a community calls itself. In fact, you cannot trademark names of communities and claim them for your own purposes. Nobody can trademark, for instance, “The United States of America” — the community of Americans that live on a piece of land on this planet under a democratic government. Not even the Founding Fathers (who did address issues like copyrights and intellectual property on their documents) could claim the trademark on the Nation they were founding.

This is, however, another battle, requiring completely different weapons. Some of my lawyer friends tend to believe they could construct a very strong case arguing that although the technology behind Second Life allows the community to exist, it can exist — and does — separately from the platform that Linden Lab created. In fact, a lot of what this “community of users” does is outside the Grid — on websites, on Twitter, on blogs, forums, and the plethora of online services, where SL is discussed and talked about. It’s also done in the real world — on conferences, seminars, workshops, presentations. At classrooms and on the street; on meet-ups or informal discussions. All this wouldn’t exist without the technology, of course, but it also exists beyond the technology. In fact, this all leads to much more than “genericide” which Linden Lab is fighting so hard.

Imagine that the DARPA, when launching their first nodes on the Internet in 1969, decided to trademark the name “Internet” (an abbreviation of “interconnecting networks”). What would have happened then? We don’t have such a strong case for “netizens” (something that was much more discussed in the late 1990s) as we do for “Second Life residents” because the emotional ties of the majority of Internet users with the technology itself are much looser. However, in the 1990s, the “Internet” was not only technology — it was mostly its users. Although the model is quite different (the Internet always relied on open source technology from its start — it is defined by its protocols, not by the software that implements the protocols — a model that Linden Lab is agressively copying in order to allow InterGrids to operate), the parallels are easy to see. When Microsoft tried to register the “Internet” trademark — claiming, not unreasonably, that the vast majority of Internet users were using Microsoft’s products and services to get access to the Internet from their computers — it was fought back and successfully won. As a result, nobody can trademark “Internet” again — something that, over ten years later, sounds ridiculous. We have Internet products, services, software, and hardware — but we also have, mostly, people.

For myself, I’m not going to engage in this battle, and the major reason is that Linden Lab is not the DARPA with unlimited funding. Protecting their assets — and the trademarks are some of their fundamental assets, because the SL client is open source and the server has been reverse-engineered, thanks to the help of many Lindens involved in the process — is fundamental if we wish to continue to have something to call “Second Life” in the future. But why does Linden Lab worry so much?

It’s because of the competition?

Well, yes and no. I’ll follow up on this on my next post. It is my personal feeling that 2007 was the “turning point” for virtual worlds, the metaverse, and all the hype. I think we’re on Year One of the turning point. And the first hints came from the VW08 conference. It seems clear that, unlike what so many people have been saying for the past four years, no one is developing a virtual world with user-generated content. No one! The arguments for not doing so will be explained shortly, but, although the number of virtual worlds is certainly exploding, and lots more are under active development, they all share one thing: controlled content. Nobody is going to “risk” to do a “Second Life clone”.

So what this ultimately means is that Linden Lab already has won one battle. They are the only company in the user-generated content business — and, if I may argue, there won’t be any others. When the huge megacorps like Microsoft, Google, Yahoo, Sony, or, who knows, Disney, Warner Brothers, and so many others will start to roll out their own virtual worlds, the content will not be user-generated. At best, it will allow some content to be imported, under strict supervision and control, but that will be all. They will, very likely, have far more users than Second Life. But they will have nothing to do with what SL is providing now to their users.

What Linden Lab is fighting is the battle for what is Second Life. It might not be “the metaverse”. It might not be the “InterGrid”. But what it is, right now, is the only collaborative virtual world with user-generated content. And, naturally enough, Linden Lab wants to make sure that it remains that way, since it might be the crucial difference that will make their product different from the competition. They don’t want any “confusion”. They don’t want Google to say that their “social MMOG” is a “Second Life done better”. They want to make sure that Second Life, the brand, is only used to describe what Linden Lab wishes it to be.

I can hardly blame them for defending that fantastically radical idea that popped out of Philip’s mind in a basement somewhere in Linden Street, San Francisco, back in 1999.

One might argue that, in this, the residents are naturally siding with LL as well. For me, the strike is over — the battle for the clarification was won, even if the results were not what we expected (or perhaps we were just naive). We’ll have to be more careful on how we present Second Life to our (small) audience which influences the (big) mainstream, but we’re still able to push for LL’s vision.

That was what mostly mattered to me, although I’m naturally not very happy about what will be lost in the process.

Images presented on this article might be strangely similar to a certain popular character of some Disney movies, but no infringement was obviously intended. And oh, I was not talking about the silly redhead. 😉

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