Trademarks in Virtual Worlds

Taser International, Inc., recently filed a trademark infringement lawsuit against the publisher of Second Life claiming that the publisher is illegitimately selling virtual Taser stun guns.

Specifically, Taser says that these virtual stun guns are being sold next to pornographic material, which harms its brand. The suit states that, by associating Taser products with such content, the defendants have damaged Taser's reputation. This concept is known in trademark law as "tarnishment." Taser complains that the defendants sell virtual Taser stun guns and also sell adult-only explicit images and scenes, thus attaching such content to the Taser mark.

While there have been a number of cases addressing tarnishment of a mark used without authorization in the context of sexual activity, obscenity, or illegal activity, providing virtual explicit materials within the same virtual environment as the virtual use of the trademark may not be enough to establish trademark tarnishment.

Taser is also using straight trademark claims, as well as design patent claims, to try and stop the virtual activity.

When applying trademark law designed for the bricks-and-mortar retail environment to a virtual environment, previous assumptions and categorizations will not always make sense. Regardless of the outcome of Taser’s suit, brand owners should be thinking about formulating effective strategies for dealing with infringement online, particularly virtual worlds, as well as taking steps to obtain protection for their intellectual property before the infringement occurs.