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Intellectual Property Law

: Patent Arcade

Case Analysis: Minsky v. Linden Research, Inc.

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Minsky v. Linden Research, Inc.

United States District Court for N.D.N.Y.

Case No. 1:08-cv-819-LEK-DRH, Settled January 22, 2009

In July 2008, Richard Minsky filed a trademark infringement lawsuit against Linden Research and an avatar in Linden?s virtual world Second Life raising issues of virtual intellectual property rights.

Minsky, an artist and reviewer involved in the art business for over 35 years who is ?recognized internationally as a leader in the field of Book Art,? wanted to establish an online presence. According to his complaint, he joined Second Life with the avatar ArtWorld Market in 2006. Shortly after joining, Minsky decided to open a gallery in Second Life to resell artwork he had acquired from other Second Life users. He also decided to start a critical review of the arts that would be published as a website, a real life magazine and a magazine inside Second Life. Minsky came up with the name SLART for his gallery and art review magazine.

Minsky claimed he chose ?SLART? because of its ?great sound? and because of the funny ?colloquial meanings it has, including a slut?s fart, a fart made while sleeping, and someone who is between a slut and a tart.? After searching Second Life and Google and finding no other meanings or uses of SLART, Minsky decided to use it as his brand name. Minsky filed for SLART trademark registration in March 2007 and it was granted in March 2008.

Later that March, Minsky came across an art gallery in Second Life called "SLART Garden" operated by the avatar ?Victor Vezina.? With the help of a lawyer offering her services in Second Life, Minsky sent a cease and desist message to Vezina in the virtual world but received no response. Minsky then wrote to Linden?s general counsel in April to stop Vezina?s alleged unauthorized use of Minsky?s trademark. Linden not only refused to acknowledge Minsky?s trademark or remove the allegedly infringing material, they also wanted Minsky to abandon his trademark with the USPTO.

After many unsuccessful discussions with Linden, Minsky filed his complaint in July 2008 which alleged:

Trademark infringement and dilution & contributory trademark infringement and dilution by Linden and Vezina (included as a John Doe defendant). Minsky alleged that Vezina?s SLART Garden infringed on his SLART trademark. The complaint states that by denying the validity of Minsky?s trademark, allowing Vezina to maintain SLART Garden, and refusing to identify Vezina so that Minsky could include him in the lawsuit, Linden contributed to trademark infringement.

Tortious Interference by Linden when it hid Vezina and refused to take down infringing materials, which Minsky claimed Linden did in order ?to try to intimidate and coerce [Minsky] into giving up [his] lawful trademark and rename [his] publication and other activities in a manner that would give them control of the content.?

Fraud by Mitch Kapor (former Chairman of Linden), Philip Rosedale (former CEO and current Chairman of Linden) and Linden Research. Minsky claims they enticed people (including Minsky) to join Second Life by promising protection of their IP rights in the virtual world but then failed to provide that protection.

For relief, Minsky sought an injunction to stop Linden and Vezina from using the SLART mark and to compel Linden to enforce his IP rights against other infringing SL residents. He also wanted $1,000 per day, from April 24, 2008 (when Linden was first notified by Minsky of the alleged infringement), for each act of alleged infringement.

In September 2008, the court granted a temporary restraining order keeping Second Life users from infringing on the SLART trademark and a preliminary injunction was granted in October. Linden then filed a petition with the USPTO to cancel registration of Minsky?s trademark (alleging that Minsky lied when he said he didn't know any other meanings SLART might have, since SL- was commonly linked to Second Life), but the Trademark Trial and Appeal Board decided to suspend hearings on the cancellation until after the case was decided. On October 10, Linden filed its answer as well as counterclaims seeking to terminate Minsky?s account and dismiss the complaint alleging trademark infringement, unfair competition and false designation of origin, and breach of contract by Minsky for using ?SLART?. The avatar ?Vezina? was dropped willingly by Minsky from the lawsuit on December 3, 2008 as Minsky never served him. Finally, on January 22, 2009, Minsky and Linden ended litigation by reaching a settlement which apparently wasn?t made public.

While Minsky?s first website SLARTmagazine.com is no longer in existence, he now appears to be operating from http://minskyreport.com/index.html.

Check out this site for periodic updates from the proceedings as well as court documents (including complaint & counterclaim).

Click here to download an interesting journal article examining virtual IP rights in Second Life.

Full post as published by Patent Arcade on June 28, 2010 (boomark / email).