Ip Enforcement In V Es

Virtual Intellectual Property Organizationwww.vipo-online.org

July 22, 2008SLBA HeadquartersPresenter: Juris [email protected]

IPR Enforcement in Virtual Environments

INTERNATIONAL HARMONIZATION OF COPYRIGHT AND

TRADEMARK LAWS CopyrightBerne ConventionWIPO Copyright Treaty and implementing regulationsDigital Millennium Copyright ActEU Copyright and E-Commerce Directives

TrademarksThe Paris ConventionThe Madrid SystemThe Trademark Law TreatyThe Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)The Community Trademark System

The Berne Convention regulates copyright protection by eliminating the requirement of registration for fixed works.

A list of contracting parties can be found at: http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=15

The United States became a party to the Berne Convention in 1988, however still requires registration in order for an author to receive statutory damages and attorney’s fees in the event of infringement.

WIPO Copyright Treaty and implementing regulations

The World Intellectual Property Organization Copyright Treaty, adopted in 1996, was drafted to address the issues raised by the internet and other technologies which were not included in the Berne Convention.

A list of contracting parties can be found at:http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=16

Examples of national implementation

The Digital Millennium Copyright Act enacted by the US in 1998 implements the WIPO treaty and heightens penalties for producing circumvention measures and (more applicable to our discussion) extends the reach of copyrights while limiting the liability of Online Providers so long as they comply with certain requirements.

The European Union has passed a series of copyright directives which implement the terms of the WIPO Treaty. Directive 91/250/EC enables copyright protection for software, Directive 96/9/EC for databases, and Directive 2001/29/EC prohibiting devices for circumventing technological protection measures.

It is however the EU E-Commerce Directive that provides for exclusion of liability for service providers.

There are five basic international agreements which attempt to harmonize the protection of trademarks and to simplify registration internationally

• the Paris Convention, the Madrid System, the Trademark Law Treaty (TLT), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Community Trade Mark System (CTM).

Enforcement of unregistered rights

Copyright

Copyright owners are no longer forced to register in the US in order to obtain protection for their works.

Under the terms of the DMCA, online Service Providers are obligated to 1) provide information for a designated copyright agent to whom notices of infringement must be sent and 2) to establish a system to respond to notices that they receive alerting them to infringing material in order to avoid liability.

Second Life Terms of Service

4.3 You will comply with the processes of the Digital Millennium Copyright Act regarding copyright infringement claims covered under such Act.

Our policy is to respond to notices of alleged infringement that comply with the Digital Millennium Copyright Act ("DMCA"). Copyright-infringing materials found within the world of Second Life can be identified and removed via Linden Lab's DMCA compliance process listed at http://secondlife.com/corporate/dmca.php, and you agree to comply with such process in the event you are involved in any claim of copyright infringement to which the DMCA may be applicable.

http://secondlife.com/corporate/dmca.php

Linden Lab will respond to allegations of copyright violations in accordance with the Digital Millennium Copyright Act (DMCA). The DMCA provides a process for a copyright owner to give notification to an online service provider concerning alleged copyright infringement. When a valid DMCA notification is received, the service provider responds under this process by taking down the offending content. On taking down content under the DMCA, we will take reasonable steps to contact the owner of the removed content so that a counter-notification may be filed. On receiving a valid counter-notification, we generally restore the content in question, unless we receive notice from the notification provider that a legal action has been filed seeking a court order to restrain the alleged infringer from engaging in the infringing activity.Please note that these notifications and counter-notifications are real-world legal notices provided outside of the Second Life environment. Linden Lab may provide copies of such notices to the participants in the dispute or third parties, at our discretion and as required by law - the privacy policy for Second Life does not protect information provided in these notices.

http://secondlife.com/corporate/dmca.php

To File a Notification A written notification must be made. This can be done either by fax or written letter (regular mail or courier). Emails will not be accepted unless a prior arrangement has been made. The notification must:1.Identify in sufficient detail the copyrighted work that you believe has been infringed upon (i.e., describe the work that you own).2.Identify the in-world item that you claim is infringing on your copyright, and provide information reasonably sufficient to locate the item in-world. For example "The allegedly infringing work I am referring to is located on the map area labeled 'Freelon, 104,30,56'."3.Provide a reasonably sufficient method of contacting you; phone number and email address would be preferred.4.(Optional) Provide information, if possible, sufficient to permit us to notify the user(s) who posted the content that allegedly contains infringing material. You may also provide screenshots or other materials that are helpful to identify the works in question. (This is for identification only, not to "prove" substantive claims.)5.Include the following statement: "I have good faith belief that the use of the copyrighted materials described above and contained on the service is not authorized by the copyright owner, its agent, or by protection of law."6.Include the following statement: "I swear, under penalty of perjury, that the information in the notification is accurate and that I am the copyright owner or am authorized to act on behalf of the owner of an exclusive right that is allegedly infringed."7.Sign the paper Please note: The DMCA provides that you may be liable for damages (including costs and attorneys fees) if you falsely claim that an in-world item is infringing your copyrights. We recommend contacting an attorney if you are unsure whether an in-world object is protected by copyright laws.Send the written document to the designated Copyright Agent at Linden Research:Linden Research, Inc.Attn: Designated Copyright Agent945 Battery StreetSan Francisco, CA 94111Alternatively, fax the document to (415)520-9660. On the cover sheet, please write ATTN: DMCA NOTIFICATION

Common law trademark rights

There is no registration requirement for trademark protection in the United States.

The use of a trademark in connection with the sale of goods and services in commerce provides the owner with certain limited rights even though the trademark is unregistered. This is especially true once consumers view the brand name as an indication of the products source.

The primary limitation on enforcement of unregistered trademarks is that the rights established by use are limited to the geographic area in which the mark is used. In the case of use of a brand on the Internet however it is likely that the geographical area would be confined to those places where actual sale of products and services can be demonstrated.

Accordingly infringement actions, that did not involve diversity of citizenship or an amount in controversy over 75,000.00 USD, would be based on state law and initiated in state courts.

TOS Abuse Reports

Report Abuse: Help Menu option

Allows a resident to click on an object and obtain information such as its name and owner.

Automatically takes a screenshot and provides the slurl location of the abuse.

Requires the submission of details such as the date, the nature of the abuse and provides a space for including this information as well as relevant chat or IM.

Dispute Resolution by LL

• 5.1 You release Linden Lab from your claims relating to other users of Second Life. Linden Lab has the right but not the obligation to resolve disputes between users of Second Life.You further understand and agree that: (a) Linden Lab will have the right but not the obligation to resolve disputes between users relating to the Service, and Linden Lab's resolution of any particular dispute does not create an obligation to resolve any other dispute; (b) to the extent Linden Lab elects to resolve such disputes, it will do so in good faith based solely on the general rules and standards of the Service and will not make judgments regarding legal issues or claims; (c) Linden Lab's resolution of such disputes will be final with respect to the virtual world of the Service but will have no bearing on any real-world legal disputes in which users of the Service may become involved; and (d) you hereby release Linden Lab (and Linden Lab's shareholders, partners, affiliates, directors, officers, subsidiaries, employees, agents, suppliers, licensees, distributors) from claims, demands and damages (actual and consequential) of every kind and nature, known and unknown, suspected and unsuspected, disclosed and undisclosed, arising out of or in any way connected with Linden Lab's resolution of disputes relating to the Service.

Enforcement benefits of federal trademark registration • The owner of a federal trademark registration can more easily sue in federal court. • A federal registration also gets you a shortcut in court; namely you don't have to prove the

mark is valid, that you are the owner, or that you have continuously used the mark in interstate commerce.

• It is possible to recover an infringement award for triple the amount of your actual damages, plus attorneys fees if someone infringes your mark.

• Only valid federal registrations are allowed to use the ® symbol ("encircled R") providing constructive notice that the mark is claimed as an exclusive right. As such, the defendant cannot claim innocent infringement, and thereby avoid monetary damages.

• A trademark registration in any country is sufficient to have Internic (Internet’s Network Information Center) to put a hold on a domain name.

• Also the registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Enforcement benefits of copyright registration

Title 17 § 411. Registration and infringement actions

(a) Except for an action brought for a violation of the rights of the author under section 106A(a) *(attribution and integrity), and subject to the provisions of subsection (b), no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

The copyright owner will be eligible to receive "statutory damages" and "legal costs and attorneys' fees" from a copyright infringer if the copyright registration was filed prior to an infringement taking place or within three months from the publication date of the work. If the infringement occurs prior to the effective date of copyright registration or after the three-month grace period then the copyright owner will not be entitled to receive statutory damages and legal costs and attorneys' fees.

Infringement litigation

Eros v. Simon

• The Plaintiffs in this case brought suit against several defendants claiming that they infringed copyright and trademark laws by making, selling, and offering for sale unauthorized copies of Plaintiffs virtual products within SL and using Plaintiffs trademarks in violation of the applicable laws, namely the Lanham Act and the Copyright Act. Eros, as you may be aware, is engaged in the sale of adult themed virtual objects for use within SL. Eros filed an application to obtain trademarks registration for the Eros mark on or about June 11, 2007. Eros filed applications for copyright registrations for the Eros Items with the Copyright Office on or about June 22, 2007. Other parties to the suit included DE Designs, RH Designs, LE Cadre Network, Nomine, as well

as Pixels Dolls and Pixel Chaps.

DMCA 512(h) Subpoena

• (h) Subpoena To Identify Infringer. • (1) Request. - A copyright owner or a person authorized to act on the owner's

behalf may request the clerk of any United States district court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this subsection.

• (2) Contents of request. - The request may be made by filing with the clerk -• (A) a copy of a notification described in subsection (c)

(3)(A);• (B) a proposed subpoena; and• (C) a sworn declaration to the effect that the purpose

for which the subpoena is sought is to obtain the identity of an alleged infringer and that such information will only be used for the purpose of protecting rights under this title.

• (3) Contents of subpoena. - The subpoena shall authorize and order the service provider receiving the notification and the subpoena to expeditiously disclose to the copyright owner or person authorized by the copyright owner information sufficient to identify the alleged infringer of the material described in the notification to the extent such information is available to the service provider.

TOS Arbitration clause

7.3 Optional Arbitration. For any Claim, excluding Claims for injunctive or other equitable relief, where the total amount of the award sought is less than ten thousand U.S. Dollars ($10,000.00 USD), the party requesting relief may elect to resolve the Claim in a cost-effective manner through binding non-appearance-based arbitration. A party electing arbitration shall initiate it through an established alternative dispute resolution ("ADR") provider mutually agreed upon by the parties. The ADR provider and the parties must comply with the following rules: (a) the arbitration shall be conducted, at the option of the party seeking relief, by telephone, online, or based solely on written submissions; (b) the arbitration shall not involve any personal appearance by the parties or witnesses unless otherwise mutually agreed by the parties; and (c) any judgment on the award rendered by the arbitrator may be entered in any court of competent jurisdiction.

Alternative enforcement strategies

Cease and Desists

Licensing

In world permissions• Full perm• Modify• Transfer• No copy• Copy

VIPO consultation and mediation services

For additional information please visit our websitewww.vipo-online.org

and send inquiries to

[email protected] or an IM to Juris Amat