Can You Trademark Someone's Island Name And Then Shut Them Down?

I read that. The story is not altered. It tells the history of the real OWK sim from the beginning until the summer of 2008. And they admit it was owned by michaal from the czech republic. Part two of that article is where they will get creative - justifying all of their actions up to now. All of these 'shayna' OWK artciles seem to be an attempt for some positive press. Whatever. She has made numerous attempts to make contact with the principals involved with OWK Village since I reported here that we have retained an attorney to prove her trademark claim is based on false information. She keeps saying she does not want to be enemies and wants to squash the drama. I think she wants to be friends now because of this:

Yawn! Get some pro help...you are wrong here

Yes, thank you Anastasia, we have pro help. A member of the San Francisco Bar Association.

Morgen, that is good. Now I'll tell you what your pro help should already have told you: SHUT UP.

I mean this in the best possible way. Any attorney worth his retainer will tell you NEVER to comment on a legal matter yourself, not in public, and not to your opponent, and not to anyone who could be subpoenaed to tell the court, "yes, Morgen told me that she..."

They did not invent the slang term "mouthpiece" for nothing. Let your lawyer do all the talking.

'Shayna' used an avatar lawyer, we didn't. Every lawyer I spoke to said that avatar chatter is not admissible in a real court of law. No matter what I say or 'shayna' says - the documented facts are the only issue here. My outrage stems from the fact that she was able to submit enough contrived evidence to DMCA to allow them to tell Linden Lab to shut us down. And we were nto given any opportunity to stop this outrage.

I post here because every content provider that invests in Second Life should be aware of these types of DMCA abuses. If she is allowed to get away with shutting down a project that started before her claim by just applying for a trademark in their name then Second Life has something more dangerous than copybot on the grid.

I submit that you're talking to the wrong lawyers. At the very least, the admissability of "avatar chatter" hasn't been tested, as far as I'm aware. If it was me judging, I'd say that anything you say that's traceable to you (and posts here and in world chat and IMS certainly are) would be admissable.

Even if they're right and I'm wrong, it is STILL a bad idea. Outrage or not, it's in the hands of the legal system now. Please leave it there.

I respectfully disagree.

DMCA is becoming more of a major issue to Second Life platform users. If Linden Lab is just going to do the minimum and accept every DMCA claim that comes across their desk, then many will need to prove (after their product is taken down) that the calim was false. By this time their business is disrupted and they have spent thousands fo real dollars in litigation fees. I believe Linden Lab needs a more stringent internal policy on DMCA claims. The letter sent to us NEVER mentioned DMCA and said we had to contact 'shayna's' lawyer if we wanted anymore information. There was nothing in the letter saying we could appeal the decision and it specifically stated do NOT contact Linden Lab about this at all. If this is a standard removal letter from Linden Lab when a DMCA claim comes in then they definitely need to make internal changes.

Linden Lab is protected under the DMCA 'Safe Harbor' law which states that ISPs responding to any DMCA claim (no matter how ridiculous) is not libel for any damages they cause when disrupting someone's business.

I believe Linden Lab needs to be more responsible to it's paying customers and not be party to these types of abuses just because they are protected from the repercussions.

Morgen,

I'm on your side. I agree with everything you've said here. The point is that you should not be saying it HERE, not when the matter is in the hands of the lawyers. No matter how much you and I think you are in the right, discussing your case here can materially harm your legal proceeding. I want you to succeed, and that's why I am urging you once again to HUSH. SSHH!

[Note: I had a couple of paragraphs of additional discussion here, but deleted them. Set a good example and all that.]

While I agree with the need for Linden Lab to protect intellectual property, it needs to be said (again): this is not a copyright dispute, which is the C of DMCA. This is a trademark dispute - regarding branding and business identity. DMCA is NOT APPLICABLE HERE. Federal registration of trademarks merely grants a presumption of ownership of the mark in question. Applications can be challenged, as there is a challenge period. Moreover, there is protection for trademarks at the state level even without federal protection, and OWK might be able to get help under California law.

Let your lawyers, the real life ones, do their job. If you're trying to goad Shayna into posting here, she's not. You're already winning on the merits in the "court of public opinion" but you're not necessarily helping yourself here, especially when you start discussing things you don't know about. Especially since all of us are not privy to all of the material facts and law to make a proper judgment.

When it's over, let us know how it turned out.

In order to succesfully fight a copyright, or trademark or whatever, it should be also registered in the country where the island owner comes from.

Example: if you trademark a name in USA only, NO WAY that you have claim on that name outside of the USA. It would mean nothing here in holland for instance where I live.

Big companies have registered their names worldwide and not only in USA.

Another thing that needs to be said about trademarks: you can't just ignore their use by others and expect to collect damages later. You have to defend your mark. It's not like copyright, where you can selectively ignore other people using it. You, as a creator, still own it and have the right to enforce your rights.

Not so with trademarks, since they are all about use in commerce. If you are not really using the mark and someone else is using it vigorously, they could prevail by the time you're ready to enforce your rights. This is why Linden Lab has been so vigorous about the use of the Second Life name, symbol, etc.

Use it, defend it, or lose it.

You and I know that DMCA has nothing to do it. Only under DMCA does SL not investigate such claims. I do not know Linden Lab's policy on trademark infringement claims. All they had to do is look on the internet and see that 'shayna' holds no trademark to OWK. And then look back in their own records and see that OWK Village island was purchased from Linden Lab in 2007. Under these conditions 'Shayna's' claim of using OWK since May 2008 has no merit. And all of this could have been avoided. But when we call Linden Lab asking what was sent to them to prove we are infringing on a trademark they say 'we cannot help you'. Linden Lab's trademark removal policy needs a serious overhaul.

Not according to Linden Lab.

i own a club in SL and someone simular happened , personally i would tell her to F off but, why dnt you just change the name of your business or eject her and do nothing about it until you get a response from someone offical or a lawyer, sounds like she is just threatening you

Angelina I wrote that post in December 2008. In February 2009 Linden Lab sent me a letter and changed the name of all of my OWK Village groups because of 'shayna's' trademark claim. We asked her lawyer to send us the evidence they sent to Linden Lab to prove they owned a trademark in the United states for OWK. What he sent us was her application for the trademark dated November 2008.

There are several reasons Linden Lab should not have respected her claim and taken down our content:
1- DMCA only applies to copyrights. What she sent Linden Lab was a application for a trademark.
2- She is only in the application process and does NOT own a trademark or copyright to OWK.
3- OWK Village was setup on Linden Lab's servers in 2007. More than a year before 'shayan's' application and claim.
4-OWK Village is NOT OWK.
5-'Shayna' claims her OWK business is a real life resort and hotel. We are NOT in the same business as 'shayna'.

Using a trademark application to make a DMCA claim seems an abuse of DMCA policies. We shall see.

.

who is morgan and where was this person when all of this went down? I mean really! I see someone here who has a vested interest in owk after the fact and is trying to salvage the scraps.

after reading the entire thread - it seems as though the question wasn't to elicit an answer but attention, hype and as morgan said 'to show the slave how many people thought it was wrong'.

This thread was completely silent for 6 days - until you started it up again. As I stated - I was a member of the OWK in SL (for seven months) when the original creator owned it - before 'shayna' told him she trademarked it and he no longer owned it. I have chat logs from last year when I tried to appeal to 'shayna's' moral side. I told her it was wrong to steal his project several times. Then the OWK in SLtm showed up over my head after her hostile take over- Then the OWK ownwer transferred OWK Village Island to us in November - Then the OWK owner deleted OWK island in December and 'shayna' had her island renamed OWK in January. And then she claimed that we were using her name. And here we are now.

The hype is about someone using a trademark APPLICATION to file a DMCA claim on a name that existed in SL almost two years before they applied to own it. The 'C' in DMCA is COPYRIGHT, not trademark.

I found this posted in LL's website in June 2007



Notice this post states "The email notice explains how to submit a DMCA counter-notification to seek restoration of the removed content." If you look at the letter I received (posted in this thread) that information was never provided by Linden Lab. Quite odd.

Once we hear back about our demand letter we will move forward. Thanks for asking.

**UPDATE**: shayna's request to register owk as a trademark in the u.s. has received a final refusal from the USPTO.
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77614614


Linden Lab removed all of our content after sending this false notice:
____________________________________________
removals [email]removals@lindenlab.com[/email]

date Tue, Mar 3, 2009 at 10:44 PM
subject Re: Notification of Trademark Infringement Received by Linden Lab
mailed-by lindenlab.com


Linden Lab has received notification from counsel for Other World Kingdom (OWK), that you have infringed its trademark and copyright rights in the Second Life environment. In particular, OWK has complained about your use of the OWK name, designs, artwork, and textures. The notification identified the following allegedly infringing work(s):

Description of Work(s) :
Wedding in a Box – Announcement
OWK Village Membership
Wedding in a Box – Announcement
OWK Village Event
Flagpole with flag
OWK Horizontal Flag
OWK Village Submissive
Second Life Group Named: OWK Village Community Team

Location of Work(s):
OWK Village (141,196,23)
OWK Village (135,182,26)
OWK Village ( 139,221,23)
OWK Village (114,183,23)
OWK Village (101,233,29)
OWK Village ( 108,238,26)

Linden Lab respects the rights of both Second Life residents and trademark owners. Accordingly, we ask that you discontinue use of “OWK” in the Second Life environment.
Please remove it from the locations Identified above and all other locations, including your inventory. If you do not do so within two days, please be aware that Linden Lab intends to do so.

Please also provide us with a new non-infringing name for the Second Life group named “OWK Village Community Team” within 48 hours. If you do not do so, Linden Lab will do so and will disable your Second Life group until we have received a non-infringing name from you.

Please direct any future communications regarding this matter to counsel for OWK:

Sincerely,

Linden Lab
____________________________________________

These people mis-represented themselves as the trademark holders of OWK - when in reality they only APPLIED for the trademark. And that application was DECLINED twice.

All Linden Lab had to do is check the trademark to make sure it existed - And I feel that they were obligated to do so before completely destroying our content.

And nowhere in this letter we received did Linden Lab inform me of the DMCA procedure (Even when I called Live Help).

We have faxed this information to Linden Lab and we await the return of our content.
Also the BAr Association of the attorney that sent Linden Lab the false claim has been contacted. We will be seeking damages.
_________________________________________

Also be aware that persons who materially misrepresent copyright infringement in DMCA claims may be liable for damages, including attorneys’ fees and costs. In one case, a company that sought removal of content protected by the fair use doctrine paid over $100,000 USD.
__________________________________________________

If that becomes fashion, a civil war will start between (all fictive!) Elisabeth's pastry shop and Elisabeth's paint shop and Elisabeth's shoe shop and Elisabeth's bread shop and Elisabeth's bookshop and Elisabeth's pharmacy and Elisabeth's party-service and Elisabeth's flower shop here in Vienna, Austria, where I live, since millions of women are here named Elisabeth and own businesses - and my first way today will be to buy a steel helmet in Elisabeth's army shop and a bullet proof vest in Elisabeth's tailoring shop to be able to walk the streets here safe and unharmed.



(still rolling on floor laughing)

Thet thar be the only OWK in the entire trademark system. Other World Kingdom is not trademarked in the USA either. And the real Other World Kingdom in Europe has been around a long time and could easily dispute a us attempt to hijack the mark.

Is someone lying and someone falling for it?

See that part: Published for Opposition September 15, 2009
That means it is just published for opposition. So OWK needs to file an opposition to kill the mark.

Here is some plain english info on filing an opposition: http://www.cummingsdesign.com/trademarks_opposition_explain_1.htm

THank you Ann. The status changed once again. When we looked in AUgust they had been denied twice. I Will e-mail tonight and call the trademark office in the morning to inform them of this mark being used by the real OWK. Hopefully this will put an end to this nonsense.
____________________________________________________________________
UNITED STATES PATENT AND TRADEMARK OFFICE - RECORD OF ATTEMPTS TO TRADEMARK OWK IN THE UNITED STATES

07/29/2009 TEAS/EMAIL CORRESPONDENCE ENTERED
07/29/2009 CORRESPONDENCE RECEIVED IN LAW OFFICE
07/29/2009 TEAS REQUEST FOR RECONSIDERATION RECEIVED
*07/17/2009 NOTIFICATION OF FINAL REFUSAL EMAILED*
07/17/2009 FINAL REFUSAL E-MAILED
07/17/2009 FINAL REFUSAL WRITTEN
07/09/2009 TEAS/EMAIL CORRESPONDENCE ENTERED
07/08/2009 CORRESPONDENCE RECEIVED IN LAW OFFICE
07/08/2009 TEAS RESPONSE TO OFFICE ACTION RECEIVED
02/13/2009 NOTIFICATION OF NON-FINAL ACTION E-MAILED
02/13/2009 NON-FINAL ACTION E-MAILED
02/13/2009 NON-FINAL ACTION WRITTEN
02/13/2009 ASSIGNED TO EXAMINER
11/18/2008 NEW APPLICATION ENTERED IN TRAM
_____________________________________________________________________

They were refused the mark on July 17th and re-filed once again.

Either way - they did not own the mark when they claimed they did last year - so Linden Lab had no obligation or right to remove our content.

I would also dispute the truthfulness of the entire application since it is questionable as to the use.

They needed to say it was for a video game virtual world. Not a conference center and resort lol. Something along the lines of:

Were they trying to make it appear tangible or something?

I believe so. I think they will say and do anything to just get control of the mark. They lied to Linden Lab and said they already owned the trademark. Our island name was OWK Village since 2007 and LInden Lab forcibly changed the name even though it was not just OWK as they changed their island name to in December 2008 - so right now they have nothing more to loose.

Yep, she's conquered all to win the tier and rights to 2 decimated islands and to be leader of a group of 1300 group members pissed off at her, sounds like a typical female win to me, if she can't get what she wants, destroy it for everyone.

Yep and who said there'd be no wars if women ran things

Apparently they can.......