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INTA Advanced Symposium: report 2

By Jeremy

Continuing the "Virtual insanity" theme, following some vigorous discussion as to whether a 'Green Hulk' avatar infringed any rights in The Incredible Hulk trade mark, Mark Robins (Nixon Peabody, (US) reviewed Second Life-type sites and "after-life" sites, marketplaces for buying, selling and doing other things with regard to virtual worlds.

Right: The Incredible Hulk - a powerful property but open to manipulation ...

The relationship between real-world and virtual reality activities was becoming blurred, with real money being spent on virtual products, and suppliers of real products and processes promoting themselves and their businesses in virtual worlds. Mark then turned to the problems of terms imposed by MMORPG games providers: were they really binding? There existed both substantive and procedural problems -- the fact that the terms were arguably unfair since they were stacked in favour of the games owner [confiscation of a gamer's assets without compensation, for example], and no-one was expected to have read them anyway (Bragg v Linden, dealing with issues of unconscionability, was cited: you can read about it here).

Ellen Shankman (Ellen B. Shankman & Associates, Israel), intervening from the floor, felt that there was a growing belief that whatever is available on the internet is "fair game" and that there was an attitude among users of "how dare you do anything to stop us", particularly no-one was expected to know the terms to the contrary. Mark suggested that some sort of general guidance to users would be a good idea in this context, to give some notion as to what constitutes an illegitimate use of IP in virtual worlds.

Moving to enforcement issues, Mark cited Marvel v NCSoft (for one comment see here), asserting that there can be no secondary infringement in allowing game users to employ character names that allegedly infringed Marvel's trade marks, if there was no primary trade mark infringement in the first place. Without use in commerce, there is no trade mark infringement -- like using "Star Wars to refer to the late US President Ronald Reagan's defence policy.

Secondary liability is a significant issue, Mark added, asking what should be done when virtual properties -- which might be non-infringing in the context of their creation and use within a game -- are bought and sold on after-life sites. Should this be characterised as a trading use and thus as an infringement?

Debra Spander (Comedy Central/MTV Entertainment, US) spoke on the IP aspects of the fantasy football statistics case, CDM Sports v MLBAM (here); she summarised the present position, which is that a broad First Amendment freedom allows the dissemination of statistics -- but not the images or other protectable indicia (possibly including state rights of publicity) to which those statistics may be attached. Whether this position will remain the same after the pro-IP rights Ninth Circuit gets its hands on it is however open to question.

Closing the session, Robert A. MacDonald (Gowling LaFleur Henderson, Canada) touched on a few tricky issues. First he described the Scrabulous episode (noted here by the IPKat) and explained how it was a great example of the dichotomy in the real world between those who saw it as a threat to IP rights and those who viewed it as a dynamic means of developing the popularity, hence the market potential, of Scrabble itself.

Robert demonstrated the jurisdictional issues that bedevil internet-related disputes, not just involving IP but involving other reputational rights, citing also the French/US litigation over Yahoo's ultimate non-liability for the sale of Nazi memorabilia and the Gutnick litigation, in which an Australian court took jurisdiction in respect of defamation of an Australian that was posted on the Dow Jones website in the US. He closed by asking why it is that no litigation on whether parodies are infringements of copyright in Canada, but so much in the US: is it a cultural acceptance of parody, or just different law?

Full post as published by IPKat on March 17, 2008 (boomark / email).