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Current and Impending Virtual World IP Issues
Call them Massively Multiplayer Online Role Playing Games (“MMORPGs”), virtual worlds or video games: These online environments in which users socialize or play games are mainstream.
With popularity and subscribership rising, games like World of Warcraft (“WoW”), EverQuest, There and Second Life are big business. Growth has brought litigation. Indeed, some law firms have practice groups addressing this medium's issues.
It isn't surprising copyright and trademark issues arise frequently in virtual worlds ' they are products of copyrightable software code and so naturally implicate intellectual property analysis. MMORPGs, such as Second Life and WoW, also have developed marketplaces for sale and barter of virtual goods for real money or virtual money that may be converted to real money (see, http://secondlife.com/whatis/mar ketplace.php). That brings a need to identify virtual-goods sources; Second Life, for instance, allows users to retain intellectual-property rights in content they create (see, http://lindenlab.com/pressroom/releases/03_11_14 and http://secondlife.com/corporate/tos.php).
Some Second Life entrepreneurs have applied to the U.S. Patent and Trademark Office (“USPTO”) for registration of avatars and other marks for virtual businesses. Recently, the USPTO registered a Second Life avatar as a design mark. U.S. Trademark Registration No. 3531683 for the Aimee Weber avatar claims computer-programming services, namely, content creation for virtual worlds, and three-dimensional platforms in International Class 42. This avatar is identified with virtual-world content services provided by registrant Alyssa LaRoche. A related mark, AIMEE WEBER STUDIO (& design), Registration No. 3531682, was granted on the same day. These were the first U.S. trademark registrations for marks identifying virtual-world-only services.
These registrations establish that marks can identify purely MMORPG sources whose trademark rights are enforceable in the real world. It also indicates that the USPTO identifies virtual-world trademark use as “use in commerce” that Congress can regulate, supporting trademark rights. It also suggests that virtual-world-only infringements would be cognizable in federal court.
Trademark and Copyright Infringements
In Second Life, real-world luxury brands are in substantial use, without their real-world corporate owners having an official presence in Second Life. Virtual-world sales of iPods loaded with copyright-protected songs abound. Copyrights and trademarks are infringed by CopyBot and other software to copy virtual goods. Owners of trademarks and copyrights originating in the virtual and real world have experienced counterfeiting in the virtual realm (see, Eros v. Leatherwood, Complaint, Docket No. 8:07-cv-01158 (M.D. Fla. 2008), and Eros v. Simon, Judgment by Consent, Docket No. 1:07-cv-04447 (E.D.N.Y. 2008)). (Plaintiffs alleged copyright infringement for exploiting a software flaw to copy software and replicate plaintiffs' virtual products.)
Virtual-world trademark and copyright infringement are well documented and analyzed in blogs and print publications. Virtual worlds are fairly new, so relatively little IP-issues comment is likely to arise concerning MMORPGs. Interoperability may be a development to raise such new issues.
Virtual worlds are self-contained and discrete. Players cannot move from one MMORPG to another without creating a new account, a new avatar and a new virtual existence. Interoperability isn't a virtual reality, but may be soon if betas go well. In a joint project in July 2008, Linden Lab, Second Life creator and publisher, and IBM were able to teleport an avatar from Linden Lab's Second Life Preview Grid into a different virtual world running on an OpenSim server. This was the first such movement (see, http://blog.secondlife.com/2008/07/08/ibm-linden-lab-interoperability-announcement). The goal: to allow avatars seamless transport between and among virtual worlds. With full interoperability, publishers and IP holders may face new challenges.
TOUs, TOSs and EULAs
Virtual worlds are essentially computer programs created by copyrightable software code. As with other software and most Web sites, Terms of Use (“TOU”), Terms of Service (“TOS”) and/or End User License Agreements (“EULA”) govern use. These documents contain rules users must follow to access and participate in each virtual world. Despite some commonality, each virtual world has different user rules. With interoperability, differences will be reconciled, perhaps in a master TOU or TOS, or significant problems will arise between virtual worlds.
For instance, Second Life is not as highly regulated as other virtual worlds. It is unique in allowing users to create content in its world and granting users IP rights in their creations (see, “Second Life Residents To Own Digital Creations,” Nov. 14, 2003, at http://lindenlab.com/pressroom/releases/03_11_14; and Second Life Terms of Service '3.2, at http://secondlife.com/corporate/tos.php). In contrast, WoW is highly regulated, does not allow user-generated content and claims all IP rights from interaction in the game (see, World of Warcraft Terms of Use Agreement '4, at www.worldofwarcraft.com/legal/termsofuse.html, and World of Warcraft End User License Agreement '4(a), at www.worldofwarcraft.com/legal/eula.html). One could argue that a user transporting an avatar from Second Life to WoW will, by virtue of teleportation and engaging in game play, accept the WoW TOS and EULA, and grant a license or ownership right in his or her user-generated content to WoW's publisher, Blizzard Entertainment Inc. Similarly, any content created by Second Life creator and publisher Linden Lab could be licensed by implication to Blizzard (under its TOS).
Transporting from a very restrictive virtual world to a less restrictive one could also cause problems. WoW avatars are sole property of Blizzard, and users can't change WoW avatars' appearance beyond user-selected characteristics and configurations Blizzard allows. Users could circumvent this by transferring avatars to Second Life and altering them there, which would also give rise to a claim by Blizzard that such users created unauthorized derivative works, violating Blizzard's copyrights.
New Infringing Activities
Interoperability also raises possible new infringements. Transporting avatars between virtual worlds could allow or lead to virtual-goods transportation between MMORPGs. This could result in virtual gray-market goods ' the importation of trademarked and copyrighted goods designated for one virtual market to another. Interoperability could also allow virtual goods designated for one virtual world to be imported to another, where those goods aren't available, are available in limited quantities or are more expensive. Much like their real-world equivalent, importation of gray-market virtual goods will implicate U.S. trademark and copyright laws, along with contract law, based on TOUs, TOSs and EULAs.
Conclusion
IP issues that virtual worlds raise are intriguing and may be analyzed from various perspectives. As these virtual worlds expand and evolve, so will the IP issues they engender.
Jess M. Collen and Matthew C. Wagner are partners, and Oren Gelber is an associate, at Collen IP, a firm specializing in all aspects of intellectual property. They may be reached at 914-941-5668 or though the firm's Web site, www.collenip.com.
Call them Massively Multiplayer Online Role Playing Games (“MMORPGs”), virtual worlds or video games: These online environments in which users socialize or play games are mainstream.
With popularity and subscribership rising, games like World of Warcraft (“WoW”), EverQuest, There and Second Life are big business. Growth has brought litigation. Indeed, some law firms have practice groups addressing this medium's issues.
It isn't surprising copyright and trademark issues arise frequently in virtual worlds ' they are products of copyrightable software code and so naturally implicate intellectual property analysis. MMORPGs, such as Second Life and WoW, also have developed marketplaces for sale and barter of virtual goods for real money or virtual money that may be converted to real money (see, http://secondlife.com/whatis/mar ketplace.php). That brings a need to identify virtual-goods sources; Second Life, for instance, allows users to retain intellectual-property rights in content they create (see, http://lindenlab.com/pressroom/releases/03_11_14 and http://secondlife.com/corporate/tos.php).
Some Second Life entrepreneurs have applied to the U.S. Patent and Trademark Office (“USPTO”) for registration of avatars and other marks for virtual businesses. Recently, the USPTO registered a Second Life avatar as a design mark. U.S. Trademark Registration No. 3531683 for the Aimee Weber avatar claims computer-programming services, namely, content creation for virtual worlds, and three-dimensional platforms in International Class 42. This avatar is identified with virtual-world content services provided by registrant Alyssa LaRoche. A related mark, AIMEE WEBER STUDIO (& design), Registration No. 3531682, was granted on the same day. These were the first U.S. trademark registrations for marks identifying virtual-world-only services.
These registrations establish that marks can identify purely MMORPG sources whose trademark rights are enforceable in the real world. It also indicates that the USPTO identifies virtual-world trademark use as “use in commerce” that Congress can regulate, supporting trademark rights. It also suggests that virtual-world-only infringements would be cognizable in federal court.
Trademark and Copyright Infringements
In Second Life, real-world luxury brands are in substantial use, without their real-world corporate owners having an official presence in Second Life. Virtual-world sales of iPods loaded with copyright-protected songs abound. Copyrights and trademarks are infringed by CopyBot and other software to copy virtual goods. Owners of trademarks and copyrights originating in the virtual and real world have experienced counterfeiting in the virtual realm (see, Eros v. Leatherwood, Complaint, Docket No. 8:07-cv-01158 (M.D. Fla. 2008), and Eros v. Simon, Judgment by Consent, Docket No. 1:07-cv-04447 (E.D.N.Y. 2008)). (Plaintiffs alleged copyright infringement for exploiting a software flaw to copy software and replicate plaintiffs' virtual products.)
Virtual-world trademark and copyright infringement are well documented and analyzed in blogs and print publications. Virtual worlds are fairly new, so relatively little IP-issues comment is likely to arise concerning MMORPGs. Interoperability may be a development to raise such new issues.
Virtual worlds are self-contained and discrete. Players cannot move from one MMORPG to another without creating a new account, a new avatar and a new virtual existence. Interoperability isn't a virtual reality, but may be soon if betas go well. In a joint project in July 2008, Linden Lab, Second Life creator and publisher, and IBM were able to teleport an avatar from Linden Lab's Second Life Preview Grid into a different virtual world running on an OpenSim server. This was the first such movement (see, http://blog.secondlife.com/2008/07/08/ibm-linden-lab-interoperability-announcement). The goal: to allow avatars seamless transport between and among virtual worlds. With full interoperability, publishers and IP holders may face new challenges.
TOUs, TOSs and EULAs
Virtual worlds are essentially computer programs created by copyrightable software code. As with other software and most Web sites, Terms of Use (“TOU”), Terms of Service (“TOS”) and/or End User License Agreements (“EULA”) govern use. These documents contain rules users must follow to access and participate in each virtual world. Despite some commonality, each virtual world has different user rules. With interoperability, differences will be reconciled, perhaps in a master TOU or TOS, or significant problems will arise between virtual worlds.
For instance, Second Life is not as highly regulated as other virtual worlds. It is unique in allowing users to create content in its world and granting users IP rights in their creations (see, “Second Life Residents To Own Digital Creations,” Nov. 14, 2003, at http://lindenlab.com/pressroom/releases/03_11_14; and Second Life Terms of Service '3.2, at http://secondlife.com/corporate/tos.php). In contrast, WoW is highly regulated, does not allow user-generated content and claims all IP rights from interaction in the game (see, World of Warcraft Terms of Use Agreement '4, at www.worldofwarcraft.com/legal/termsofuse.html, and World of Warcraft End User License Agreement '4(a), at www.worldofwarcraft.com/legal/eula.html). One could argue that a user transporting an avatar from Second Life to WoW will, by virtue of teleportation and engaging in game play, accept the WoW TOS and EULA, and grant a license or ownership right in his or her user-generated content to WoW's publisher,
Transporting from a very restrictive virtual world to a less restrictive one could also cause problems. WoW avatars are sole property of Blizzard, and users can't change WoW avatars' appearance beyond user-selected characteristics and configurations Blizzard allows. Users could circumvent this by transferring avatars to Second Life and altering them there, which would also give rise to a claim by Blizzard that such users created unauthorized derivative works, violating Blizzard's copyrights.
New Infringing Activities
Interoperability also raises possible new infringements. Transporting avatars between virtual worlds could allow or lead to virtual-goods transportation between MMORPGs. This could result in virtual gray-market goods ' the importation of trademarked and copyrighted goods designated for one virtual market to another. Interoperability could also allow virtual goods designated for one virtual world to be imported to another, where those goods aren't available, are available in limited quantities or are more expensive. Much like their real-world equivalent, importation of gray-market virtual goods will implicate U.S. trademark and copyright laws, along with contract law, based on TOUs, TOSs and EULAs.
Conclusion
IP issues that virtual worlds raise are intriguing and may be analyzed from various perspectives. As these virtual worlds expand and evolve, so will the IP issues they engender.
Jess M. Collen and Matthew C. Wagner are partners, and Oren Gelber is an associate, at Collen IP, a firm specializing in all aspects of intellectual property. They may be reached at 914-941-5668 or though the firm's Web site, www.collenip.com.
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