Minsky vs Linden Lab: Restraining orders and petitions

The dispute between Richard Minsky (registered owner of the SLART trademark), and Linden Lab (applicant for the SL trademark) has been heating up. Minsky previously filed a civil suit in a federal court, naming Linden Lab, Philip Rosedale, Mitch Kapor and one or more other Second Life users (as John Does) for (variously) trademark infringement, trademark dilution, tortious interference, and fraud.

Until such time as the judge decides whether a preliminary injunction should be granted, a temporary restraining order has been put in place -- most of the restraint being applied to Linden Lab. Meanwhile, Linden Lab has filed a petition of cancellation seeking to have the US Patent and Trademarks Office (USPTO) cancel Minsky's ownership of the SLART trademark.

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First, the temporary restraining order. In brief, it requires everyone to keep copies of all their communications preserved and in good order; certainly a natural enough requirement. If Minsky identifies infringement of the SLART trademark in Second Life, he must notify Linden Lab through appropriate channels, and Linden Lab has two business days to commence action to quash the infringement, and five business days to complete it.

If there are any lumps or bumps in the procedure, the Lab is to inform Minsky, and for his part he may obtain the physical-world identities and contact information of users from the Lab if the nominated Magistrate Judge (David R. Homer) agrees that a prima facie (that is, self-evident from the facts) case of infringement exists, and that the information is necessary.

That restraining order was ordered by the court on 12 September by US District Judge Lawrence E. Kahn.

Meanwhile, in the background, Linden Lab has been seeking to get the SLART trademark eliminated entirely.

James Cady of Howrey LLP (Howrey LLP seem to be handling all of Linden Lab's trademarks) filed a Petition of Cancellation with the USPTO. The petition claims (among other things) that Minsky committed fraud during application for the trademark, specifically material misrepresentation which otherwise would have seen his application denied. The petition is really quite involuted reading and at times doesn't seem to make a whole lot of sense.

For his part, Minsky responded -- his belief is that some millions of users using the term SL for more than four years prior to Linden Lab's attempt to register the mark (approximately three months after Minsky's application for his own) renders the term SL to be a generic one. He also points out that Linden Lab 'did not include SL as a claimed mark on its website until March 24, 2008, six days after the SLART mark was issued its Certificate of Registration'.

Both documents contain an inordinate number of fart and slut references, which certainly makes for interesting (and admittedly rather awkward) reading compared to much of the usual legal fare.

Minsky's core points in his defense are that Linden Lab:

• Is asserting fraud based on statements (some by the USPTO) taken out of context and references to rights which do not exist.

• Is not being harmed, and thus has no standing to make the petition.

• 'Has no right to the generic descriptive term SL ... [F]ailed to accurately identify its interest in the generic descriptive term SL prior to its adoption by the general public.'

Actually, those are pretty good arguments. Minsky's response gets points for clarity. It was produced by Tamiko R. Franklin (Juris Amat in Second Life). Quite aside from any merits either side have in the case, we'd rather be reading something produced by Franklin than Howrey LLP if all of her work is this straightforward.

You can get a hold of all of the documents from Benjamin Duranske's Virtually Blind blog. Documents relating to the Temporary Restraining Order are here, and The Petition and its response are here. Both are accompanied by Duranske's excellent commentary.