The question of the hour is whether or not Donald Trump has grounds for a case against Frolic Mills for trademark infringement in the use of the trademarked “Miss Universe” in Mills’ Miss SL Universe pageant and organization. In order to proceed with forming opinions, one should be familiarized with what trademark infringement and trademark dilution are first.
1. Trademark Infringement:
If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. 15 U.S.C. §§ 1114, 1125. The standard is “likelihood of confusion.” To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).
So, for example, the use of an identical mark on the same product would clearly constitute infringement. If I manufacture and sell computers using the mark “Apple,” my use of that mark will likely cause confusion among consumers, since they may be misled into thinking that the computers are made by Apple Computer, Inc. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. So, for example, “Applet” computers may be off-limits; perhaps also “Apricot.” On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim. Thus, Apple Computer and Apple Records can peacefully co-exist, since consumers are not likely to think that the computers are being made by the record company, or vice versa.
Between the two ends of the spectrum lie many close cases, in which the courts will apply the factors listed above. So, for example, where the marks are similar and the products are also similar, it will be difficult to determine whether consumer confusion is likely. In one case, the owners of the mark “Slickcraft” used the mark in connection with the sale of boats used for general family recreation. They brought an infringement action against a company that used the mark “Sleekcraft” in connection with the sale of high-speed performance boats. Because the two types of boats served substantially different markets, the court concluded that the products were related but not identical. However, after examining many of the factors listed above, the court concluded that the use of Sleekcraft was likely to cause confusion among consumers. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
(researched from the Harvard Law Metaschool at http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#7)
2. Trademark Dilution:
In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is “famous.” In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. § 1125(c). Kodak, Exxon, and Xerox are all examples of famous marks. Under state law, a mark need not be famous in order to give rise to a dilution claim. Instead, dilution is available if: (1) the mark has “selling power” or, in other words, a distinctive quality; and (2) the two marks are substantially similar. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).
Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark that dilutes the distinctive quality of that mark, either through “blurring” or “tarnishment” of that mark; unlike an infringement claim, likelihood of confusion is not necessary. Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, ToysRUs successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996).
(again used from the Harvard Law site at http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#7)
Next, can a case be assumed against Frolic Mills for trademark infringement? In my opinion, yes.
In the ad, Mills clearly calls the Miss SL Universe pageant as Miss Universe, whose trademark is owned by Donald Trump and the Miss Universe Organization. Second, despite the SL pageant being held on a virtual medium, the use of “Miss” and “Universe” in the title of the pageant and subsequent organization would constitute trademark infringement.
Now, has an act of trademark dilution been committed? In order to prove so, it would have to proven that the activities of Frolic Mills’ Miss SL Universe pageant has lowered the value of Donald Trump’s Miss Universe pageant. Well, wouldn’t that be a matter of opinion? If one person thinks less of Trump’s pageant, does that constitute trademark dilution? I don’t believe it is so simple to determine, since it would mean comparing real life to Second Life.
The third question of the problem is whether or not Frolic Mills experienced a financial profit from the Miss SL Universe pageant. Due to the fact that he does charge an exuberant amount to designers who rent on the Best of SL Boulevard and Frolic does market his shopping district in association directly with Miss SL Universe, designers with shops on his sim are directly connected and utilized during the Miss SL Universe pageant, it is clear that he does experience a financial profit as a direct result of his Miss SL Universe pageant.
Therefore, in my opinion, yes, Frolic Mills is guilty of trademark infringement, but it is unclear whether he is guilty of trademark dilution. What is to come of this situation when you’re facing an investigation helmed by one of the most wealthy and powerful men in the world?
If the situation does escalate to one of further legal action, what would the rammifications be upon Second Life, if Frolic is legally found guilty of trademark infringement and/or trademark dilution? Would photosourcing in the fashion industry be the next target? If a shape is advertised to be based on an image or representation of a famous model or actress, will it be a future case of trademark infringement or copyright infringement? If a movie or play is enacted on Second Life, will that be grounds for a lawsuit? I spoke at length with several young ladies associated with the Miss SL Universe pageant and due to the nature of the events at hand, I thought it best to not include quotes or conversations that took place, but I do thank them for their assistance and cooperation. Likewise, I chose not to contact Frolic Mills, as anything he stated could possibly be considered in the situation. It would be interesting to note, as well, that he has changed the name of the pageant to Miss Virtual World, according to a participant interviewed, in light of the investigation by Linden Lab.
According to an e-mail sent out from Linden Lab:
Subject: Re: Notification of Trademark Infringement Received by Linden Lab
We’re writing to let you know about changes made to your profile in
Second Life. Miss Universe L.P, LLLP — the owner of the Miss Universe
trademark — has complained about use of the Miss Universe trademark in
the Second Life environment.
Linden Lab respects the rights of both Second Life residents and
trademark owners. Accordingly, Linden Lab has removed uses of “Miss
Universe” and “Miss SL Universe” from your Second Life profile. Please
do not continue to use “Miss Universe” or “Miss SL Universe” in the
Second Life environment.
Thank you for your cooperation.
I believe it’s correct to assume that all use of Miss Universe and Miss SL Universe when speaking of the pageant is to be terminated at once, according to the e-mail from the Lindens. Again, what will the future rammifications of these actions be? SL clubs named after RL clubs? Yes, the names of clubs, magazines, organizations, movies, etc. are copyrighted and yes, I suppose it can be said that if, as a hypothetical example, an individual chooses to name their shop as Sacks 5th Avenue, it would be considered questionable, in light of current events. The sellers of those little bottles of champagne and beer with Bud labels on the little bottles or those who sell Bong vodka on Second Life are, technically, also guilty of trademark infringement. What’s next to come?
Second Life has received an abundance of real life publicity with such events as Callie Cline’s avatar being used in Maxim Magazine and CSI making use of Second Life on an episode of the program. However, will circumstances such as this shed an unnecessary negative light upon the game, if it should be focused upon by the real life media? If so, how will it affect the way you live your Second Life?
Thursday, October 23, 2008