Trademarking and educators: Linden Lab responds

As reported yesterday, there’s been some activity around the use of the ‘SL’ trademark, with Australian educator Jokay Wollongong receiving a takedown notice. I shot through a few questions to Linden Lab on the issue, and Pathfinder Linder has formally responded. So as promised, here’s Linden Lab’s full right of reply:

Lowell: What was the impetus for LL tackling Jokay’s Wiki specifically?

Pathfinder: Jokay’s Wiki is a wonderful educational resource for the Second Life community, and Jokay organizes incredibly thoughtful and informative conferences about education in Second Life.

Some Lindens were recently invited to participate in a conference that Jokay was organizing, and we wanted very much to accept and show our support for Jokay and all the amazing work she’s done for the community. We were concerned, though, that the name of her blog is “Second Life in Education” and that her uses of our trademarks do not comply with our policies and create confusion about her blog’s relationship with Linden Lab.

We realize now that we poorly expressed our concerns by sending her an email from our trademark team, and that we should have reached out more personally to such an important contributor to the educational community. I (Pathfinder Linden) did speak to Jokay inworld after we sent her the email to explain to her why it’s so important for Residents to respect our trademark policies. However, in hindsight, this should have been the first step in our process.

Lowell: Does LL see it’s in its interest to issue takedown notices to educators showcasing one of SL’s strengths (i.e. it’s power as en educational platform)?

Pathfinder: We have great respect for the work of Jokay and other educators in Second Life. We’re also committed to increasing awareness of intellectual property, as we said in our recent Content Management Roadmap, through improved policies and outreach to the community. When we get in touch with Residents about improper uses of intellectual property – whether it be the intellectual property of other Residents, companies outside of Second Life, or Linden Lab itself – it’s nothing personal. It’s simply what we must do to help protect intellectual property.

Lowell: How much confidence should educators have that further trademarks won’t be registered, leading to a further change of landscape that can’t be forseen?

Pathfinder: When choosing a brand name or name for your website or domain name, it’s good practice to check that you are not using another person’s trademark or brand name. Trademarks do not need to be registered – so it’s best to search the web as well as trademark office records, and to consult a trademark attorney if you’re uncertain. This good practice is called “trademark clearance,” and it protects against your having to make a name change down the road.

Pathfinder: In this case, both Second Life and SL have been Linden Lab trademarks since we first started using them for our virtual world many years ago. To help promote awareness about proper use of our trademarks, especially for Residents unfamiliar with trademark clearance, we updated our trademark policies in early 2008, providing additional information and examples. We have also been reaching out to Residents about our trademark policies.

Lowell: How would you respond to claims that actions like this provide further motivation for people to move to other grids or platforms outside of SL?

Pathfinder: Intellectual property rights are part of what makes Second Life unique and compelling, and we’re committed to supporting a community that respects each other’s intellectual property. Although making changes in response to intellectual property complaints can be frustrating, it ultimately makes our community stronger, more aware and respectful of each other’s intellectual property, and a more desirable place for content creators and content consumers alike.

==

Over to you – is Linden Lab’s position a reasonable part of protecting intellectual property rights or an example of brand protection at the expense of community?

Update: Tateru Nino at Massively has a follow-up piece with some views of educators on Linden Lab’s response to the issue.

Comments

  1. Considering the fact that they are soliciting DJs (as well as live performers) for Burning Life, with nary a whisper of licensing or performance rights, I'd say it's clearly an example of brand protection at the expense of community.

  2. daleoztron says:

    Linden Labs obviously doesn't want to be mistaken for somebody who has had a clear vision of what this technology can be used for and has promoted it in a helpful and positive way.

  3. Let's see. I own a business. Passionate users generate information and resources that help people use my services and products more deeply and effectively. What do I do?

    1) Thank passionate users for caring so deeply and make them feel valued and respected. Ask that these passionate users put a disclaimer in a prominent place on their web sites explaning the relationship between their business and mine. Graciously allow them to continue sending me $$-paying customers.

    2) Send an impersonal email demanding take down / rename. Then, as an afterthought, talk to the person and explain how important MY interests are and how they should respect MY interestes but that really it's not about ME it's about EVERYONE using the community and I'm just trying to PROTECT the community.

    Now onto this situation:

    “We were concerned, though, that the name of her blog is “Second Life in Education” and that her uses of our trademarks do not comply with our policies and create confusion about her blog’s relationship with Linden Lab.”

    Jo never claimed that her wiki was associated with Second Life in any way. She clearly stated that it was started by her and her then partner at the very top of the blog. She does not use the Second Life logo on her wiki.

    Linden Lab knew this wiki existed and promoted it to users of a mailing list http://www.flickr.com/photos/kerryank/3973520736/ Why would LL promote this web site that they feel is in violation of their policies?

    “Although making changes in response to intellectual property complaints can be frustrating, it ultimately makes our community stronger, more aware and respectful of each other’s intellectual property, and a more desirable place for content creators and content consumers alike.”

    This isn't about the issues Linden Lab has been dealing with regarding their less than successful attempts at protection of creators' in-world intellectual property.

    This is about hamfisted, cookie-cutter approaches to trademark protectionism. Passionate users are gold to businesses and smart companies appreciate that. When one like Jo clearly states that her site was set up by her and her partner and doesn't infer it is an official site, then that can and should be taken into consideration.

    Pathfinder's responses seem less like an explanation or outreach to a commnity and more like a good, old-fasioned, CYA public relations exercise.

  4. The Lindens are doing the right thing to protect intellectual property. It's never pleasant when you have to do that with someone willfully and knowingly violating it. And Jokay can't hide behind not knowing, as the policy was spelled out on the blog a year and a half ago, and steps indicated for how you could still link your business to SL but with their rules for how it would be manifested, and that meant not having a website with this name per se.

    Educators want all this opensource, free content, free volunteer labour always, but that is not the basis for a civil society. Private property is.

  5. Lowell Cremorne says:

    Prokofy, for me the issue is that the takedown was issued on one hand whilst Jokay's wiki was promoted in official forums on the other. It's a double standard well worth some scrutiny. I've always maintained my sympathy for the difficult role LL have, but they do make mistakes and this seems one.

    I've read through Pathfinder's response a few times and have to agree with KerryJ that there's a healthy does of PR-talk in there, as you would expect.

  6. Prokofy,

    I have to agree with you…scary huh? While the steps to the solution might have been handled differently perhaps, as Pathfinder mentions, the overall issue is one that SL residents ask for every day of the year…intellectual property rights protection. It is not in any way a slam against educators, nor does it mean doom and gloom for the Wiki…it's actually an opportunity to rebrand the effort to raise even more awareness.

    -VB

  7. This is a typical case of what is “morally right” and what is “legally right”. Of course that Linden Lab is legally right to protect their trademarks and copyrights, and enforce that protection legally, with or without recourse to the courts. That goes without saying. Nobody wants that the name “Second Life”, because of Linden Lab's failure to enforce it somewhere, is grabbed by a group of tough lawyers (way tougher than LL!) and force us all (including LL!) to cease and desist using the name “Second Life” and swamp every resident under lawsuits without end. While this is hardly likely to happen — Linden Lab would fight first! — it's a dreadful scenario. To prevent it, Linden Lab has to routinely make takedown notices of the misuse of the name “Second Life”, to be able to provide proof to any court that they are, indeed, protecting their own trademarks, as they're required to do to keep their claims over them.

    Then there is the “morally right” issue of the story.

    This wiki for educators in particular is not something being “subversively” done without LL's knowledge or consent. Pathfinder himself helped to promote it! The issues of fair use, or simple mention of the trademark, are complex and almost always only possible to sort out in a court, but imagine that I write a blog post saying: “20 ways to improve your Windows experience” which becomes popular enough to catch the attention of Microsoft's lawyers. Should I fear a lawsuit after a takedown notice? Of course not — I'm actually helping to promote Microsoft's product and giving similar users tips so that they can be more happy while using their products. No infringement was intended, rather the contrary, only a promotional effort was being made, for free and without any labour costs on Microsoft's part. (Granted, if I were selling that article, things might be slightly different — even so, billions of books with the “Windows” trademark on the title exist, and Microsoft is not suing them, so long as the book mentions that Windows is a trademark of Microsoft).

    This is a very similar example. The “Second Life in Education” wiki clearly states at the bottom left of the sidebar: “Notice and Disclaimer: Second Life is a trademark of Linden Research, Inc. The SLeducation Wiki and the Islands of jokaydia are not affiliated with or sponsored by Linden Research.” Furthermore, it exhibits the inSL logo, which, at some point in time, required one to send an email to LL to inform them on its use (this basically meant that at the very least LL would know where the inSL logo was being used, and it would be part of a small database of “fan sites” or similar sites which are SL-related). Pathfinder, as well as many other Lindens, were fully aware of the wiki, and what purpose it served — since they promoted it publicly! The site hasn't a single design element that relates either to LL's or SL's corporate image. It explains what Second Life is, and how it is used in education, and clearly states the purposes and goals of the wiki (presenting use cases of SL in education). One of the first entries clearly states: “PLEASE NOTE: As this is my professional wiki and I need to retain editing rights I do not accept membership for this space.” — so it's not “a Linden Lab wiki”, or a space full of hackers and trademark violators to “grab” LL's trademark in some way and gather profit/visibility from it.

    So what Linden Lab should have done, as Pathfinder sort of claims in a half-apologetic note, is to get in touch with Jokay fist. They could have said, “our lawyers are worried about the way you associate our trademark with 'Second Life' and we wish you to make a few changes”. Together, they would have figured out a way to make it even more sure that it doesn't violate any of LL's trademarks. They would probably exchange a few emails where, at the end, Linden Lab would allow Jokay to keep the wiki, so long as some appropriate messages are inserted into it or trademark information is explained. Perhaps the opening page would have to have more disclaimers, I don't know.

    And I'm sure this has all been figured out in the mean while 🙂

    No, the real problem with a popular site like that is… links. Google lists at least some 500 links to this wiki. If it changes the URL, it means all that content gets lost from search engines. If the name is changed, it's not certain that Wikispaces, who host the wiki, can somehow redirect the old name to the new one (they might be able to do that, I have no idea). This would mean that all those presentations out there and even LL-promoted links would simply point to… nowhere. Which would be a tremendous loss to the educational and research communities.

    So I definitely hope that LL's lawyers, with the helpful hand of Pathfinder, figure out a reasonably — and sane — solution to the problem. Hopefully all it takes is to add a few notices on the wiki to make LL's lawyers happy, so that they can send Jokay an email saying “under these circumstances, as spelled on this email, we're fine with your reference to LL's trademark 'Second Life' and will allow your wiki to stay up”. That would definitely continue to uphold LL's claim upon their trademark — if Jokay refuses to comply, LL would still be able to force a takedown — but keep the important information on the wiki available, and all links to it still working.

    Let common sense sort it out.

  8. This is a typical case of what is “morally right” and what is “legally right”. Of course that Linden Lab is legally right to protect their trademarks and copyrights, and enforce that protection legally, with or without recourse to the courts. That goes without saying. Nobody wants that the name “Second Life”, because of Linden Lab's failure to enforce it somewhere, is grabbed by a group of tough lawyers (way tougher than LL!) and force us all (including LL!) to cease and desist using the name “Second Life” and swamp every resident under lawsuits without end. While this is hardly likely to happen — Linden Lab would fight first! — it's a dreadful scenario. To prevent it, Linden Lab has to routinely make takedown notices of the misuse of the name “Second Life”, to be able to provide proof to any court that they are, indeed, protecting their own trademarks, as they're required to do to keep their claims over them.

    Then there is the “morally right” issue of the story.

    This wiki for educators in particular is not something being “subversively” done without LL's knowledge or consent. Pathfinder himself helped to promote it! The issues of fair use, or simple mention of the trademark, are complex and almost always only possible to sort out in a court, but imagine that I write a blog post saying: “20 ways to improve your Windows experience” which becomes popular enough to catch the attention of Microsoft's lawyers. Should I fear a lawsuit after a takedown notice? Of course not — I'm actually helping to promote Microsoft's product and giving similar users tips so that they can be more happy while using their products. No infringement was intended, rather the contrary, only a promotional effort was being made, for free and without any labour costs on Microsoft's part. (Granted, if I were selling that article, things might be slightly different — even so, billions of books with the “Windows” trademark on the title exist, and Microsoft is not suing them, so long as the book mentions that Windows is a trademark of Microsoft).

    This is a very similar example. The “Second Life in Education” wiki clearly states at the bottom left of the sidebar: “Notice and Disclaimer: Second Life is a trademark of Linden Research, Inc. The SLeducation Wiki and the Islands of jokaydia are not affiliated with or sponsored by Linden Research.” Furthermore, it exhibits the inSL logo, which, at some point in time, required one to send an email to LL to inform them on its use (this basically meant that at the very least LL would know where the inSL logo was being used, and it would be part of a small database of “fan sites” or similar sites which are SL-related). Pathfinder, as well as many other Lindens, were fully aware of the wiki, and what purpose it served — since they promoted it publicly! The site hasn't a single design element that relates either to LL's or SL's corporate image. It explains what Second Life is, and how it is used in education, and clearly states the purposes and goals of the wiki (presenting use cases of SL in education). One of the first entries clearly states: “PLEASE NOTE: As this is my professional wiki and I need to retain editing rights I do not accept membership for this space.” — so it's not “a Linden Lab wiki”, or a space full of hackers and trademark violators to “grab” LL's trademark in some way and gather profit/visibility from it.

    So what Linden Lab should have done, as Pathfinder sort of claims in a half-apologetic note, is to get in touch with Jokay fist. They could have said, “our lawyers are worried about the way you associate your wiki with our 'Second Life' trademark and we wish you to make a few changes”. Together, they would have figured out a way to make it even more sure that it doesn't violate any of LL's trademarks. They would probably exchange a few emails where, at the end, Linden Lab would allow Jokay to keep the wiki, so long as some appropriate messages are inserted into it or trademark information is explained. Perhaps the opening page would have to have more disclaimers, I don't know.

    And I'm sure this has all been figured out in the mean while 🙂

    No, the real problem with a popular site like that is… links. Google lists at least some 500 links to this wiki. If it changes the URL, it means all that content gets lost from search engines. If the name is changed, it's not certain that Wikispaces, who host the wiki, can somehow redirect the old name to the new one (they might be able to do that, I have no idea). This would mean that all those presentations out there and even LL-promoted links would simply point to… nowhere. Which would be a tremendous loss to the educational and research communities.

    So I definitely hope that LL's lawyers, with the helpful hand of Pathfinder, figure out a reasonably — and sane — solution to the problem. Hopefully all it takes is to add a few notices on the wiki to make LL's lawyers happy, so that they can send Jokay an email saying “under these circumstances, as spelled on this email, we're fine with your reference to LL's trademark 'Second Life' and will allow your wiki to stay up”. That would definitely continue to uphold LL's claim upon their trademark — if Jokay refuses to comply, LL would still be able to force a takedown — but keep the important information on the wiki available, and all links to it still working.

    Let common sense sort it out.

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