fenwick & west
I. INTRODUCTION
Recent years have seen the development of online
communities through which massive numbers of users can
interact with each other and with the environment itself in
ways that increasingly approach real-world interactions.
Within such worlds, one can wander around virtual streets
or into virtual buildings, buy a virtual newspaper, get into a
virtual fistfight with another user’s avatar, or simply change
one’s virtual clothes.
The new possibilities presented to users by virtual worlds
are pertinent to the interests of trademark holders in two
main ways: (1) They create new venues through which marks
may be used to promote products or services; and (2) They
open up new spaces of commercial activity, raising the
possibility of trademark infringement dilution and publicity
rights violations within the virtual realm.
II. TRADEMARK OPPORTUNITIES IN VIRTUAL WORLDS
A. Advertising and Marketing Space in Virtual Worlds.
Businesses have explored a variety of advertising and
marketing opportunities in virtual worlds, including:
1. Brand Placement. Trademark holders may use virtual
versions of traditional marketing spaces to proliferate
their brand, such as by buying advertising space on
virtual billboards and blimps. Brand owners may also
establish a brand presence by purchasing land and/or
buildings in virtual worlds on which they prominently
display their mark(s). Companies as varied as Adidas,
Sun Microsystems, and the NBA have purchased virtual
headquarters in Second Life. Coca-Cola owns a virtual
concert pavilion bearing its name (the “Coca-Cola
pavilion”), and Wells Fargo bought its own virtual island,
now named “Wells Fargo Stagecoach Island.”
2. Sale of Virtual Versions of Off-Game Products. Many
businesses have set up shop within virtual worlds to
sell in-game versions of their products, including , for
example, Nike, Dell, Toyota, American Apparel and
Reebok. A virtual Scion car costs about 300 Linden dollars
in Second Life, which translates roughly to one US dollar.
A pair of customizable Reebok sneakers costs about
50 Linden dollars. These virtual sales can be used as
marketing for sale of corresponding real world products.
For example, users can click through Second Life to
enter Reebok’s retail website and purchase personalized
sneakers matching their avatar’s shoes.
3. Cross-promotional Agreements. Trademark holders
may insert their mark into virtual worlds through cross-
promotional advertisement with game developers. For
example, Blizzard Entertainment, the developer of the
game World of Warcraft, recently entered into a cross-
promotional deal with soda manufacturer Mountain Dew.
As part of the promotional campaign, Mountain Dew
sponsored virtual “Battle-Bot pets” that World of Warcraft
users could own and play within the game. In order to
power the virtual pets, users had to purchase “Mountain
Dew Game Fuel” by visiting the Mountain Dew website.
At the same time, Mountain Dew sold World of Warcraft
themed soda (“Game Fuel”) in stores across the United
States.
4. Marketing Events. Trademark holders may sponsor
concerts, parties, and events that avatars can attend,
in connection with promotional activities, or simply to
display and proliferate their marks within the virtual
world. For example, Advanced Micro Devices, Inc. (AMD)
throws an annual “AMD Treasure Hunt” in Second Life.
5. Virtual Marketing Campaigns. Trademark holders may
take advantage of norms of openness and user-creativity
in virtual worlds to obtain free and widespread promotion
of their mark.
An example of this approach to trademark in virtual worlds
is exemplified by Coca-Cola’s “Virtual Thirst” Campaign
(http://www.virtualthirst.com/):
a. The Virtual Thirst competition invited users to
“create a virtual vending machine” for Coca-Cola
products “that unleashed a refreshing and attention-
grabbing experience, on demand.” Entries were
judged by an Advisory Panel of Second Life users,
and were evaluated according to creativity, “cultural
fit within Second Life,” consistency with the Coca-
Cola brand, potential value to Second life residents,
and technical feasibility. The winner of the design
competition received 500,000 Linden dollars and a
trip to San Francisco.
Is There A Second Life For Trademarks In
Second Life®?
by sally m. abel and adrienna wong
