CBS Cracks Down on Sales of "Star Trek" Goods in Second Life

 Second Life has a large science-fiction community, consisting of roleplaying groups, sci-fi themed combat areas, and general fans. While some areas and items are completely original, other places and groups are inspired by stories and shows. Probably the science fiction show with the biggest following is "Star Trek," with a number of roleplaying groups and locations. Ships, uniforms, building styles, alien race avatars, and other items are faithfully depicted as much as the builders' time and skills can allow. Even people not in role-play groups have sought Trek items, for Halloween, costume parties, or just for fun. And numerous Star Trek items have been made for sale in both inworld stores and the Marketplace.

There's just one not so small problem. The "Star Trek" franchise falls under copyright protection, which is owned by CBS. And begining last month, they began making an effort to enforce it in Second Life.

Following a tip from a reader, Second Life Newser got in touch with Cheshyr Pontchartrain, the owner of Novatech which made a number of Star Trek items. Cheshyr told me someone had "turned-in a number of Star Trek groups and merchants to CBS. … My problem is the way Linden Lab handled the issue. CBS objected to all content, yet Linden Lab singled me out with a one-week suspension. The shops that exclusively sell Star Trek merchandise weren't enough touched. Their items are still online." He stated he had heard the one who notified CBS was involved in a personal feud "with various Trekkies here."

Cheshyr also provided copies of the emails to Linden Lab and himself, in addition to his response to CBS. His letter stated he had removed the bulk of his items from sale and would soon have the last of them gone, and asked "exactly what CBS Studios is objecting to, and what we are permitted to do, so that we can avoid this in the future."

I was also told that set designs, such as the classic Enterprise bridge, are only protected for 25 years from publication. And since classic Star Trek has been off the air for 43 years, something seems off.  I may have been misinformed, but 40+ years of people selling Star Trek art, mock-up real-world bridges, etc., implies that little was done to discourage them.

Losing a few products means little to me, as Star Trek is an insignificant part of my product line, and $80 income in 7 years is hardly life-changing.  But there are thousands of Star Trek fans in the Second Life community who are afraid they’ll have to move on to a new TV series because of this.  Any light you can shed will be appreciated, especially by your fan base.

Second Life Newser also contacted Ntanel Swordthain of the IFT Sci-Fi Alliance. His response was the following:

I am working on it with CBS.  I have to hold off on saying much more than that we know that they are going down the SL Marketplace list and starting from the largest offenders to the smallest.  The largest, as we now know, was Cheshyr Pontchartrain.  We do not know with any certainty that CBS is coming into Second Life or if the statement from CBS' legal representative about allowing no replication of Trek properties is the actual intent of CBS.  If it is, it will effectively end Trek fandom on Second Life.  As of now, we are still operating under the rules of fair use.  Until I get clarification on the statement made by CBS' legal representative, we will proceed as normal.  This by no means gives anyone permission to continue breaching CBS' rights by selling replicated items. I will update everyone via a notice on the IFTSFA group once I know more. 

A look at Second Life Marketplace searching for items tagged "Star Trek," most items had little to do with Trek, though a few obviously were, and others bared some resemblance to ships and things from the show. When a small science fiction convention took place inworld, people were cautioned about selling Trek items, otherwise the groups were to proceed as normal.

Twice in the history of Second Life, the lawyers of the copyright owners of two science-fiction stories have gone after roleplay groups. In 2009, The Frank Herbert Estate went after a 130 member group and their "Dune" sim, which responded by removing copyrighted terms and renaming themselves. In 2010, Universal Studios went after "Battlestar Galactica" items and sims, and Linden Lab closed down some places. A few months later, Universal reached an agreement with the BSG groups, saying they could use the name, but no items made with copyrighted terms could be sold: uniforms, ships, weapons, etc. would have to be "freebies."

Both times, some inworld Trekkers wondered if they might be next and what would happen. Now, the copyright owners are focusing attention on the content that makes their areas what they are. What happens next remains to be seen. Will Star Trek in Second Life will vanish, or continue to "live long and prosper?"

Bixyl Shuftan


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CBS
51 West 52nd Street
New York, NY 10019

On behalf of Lisa Cattan

October 23, 2012

Via Email
Laura Pirri
Linden Research, Inc.
945 Battery Street
San Francisco, CA 94111
removals@lindenlab.com

Dear Ms. Pirri:
 
I write on behalf of CBS Studios Inc. (the “Rights Owner"), owner of certain intellectual property rights to the television series “Star Trek.” We have a good faith belief that the information in this notice is accurate. Under penalty of perjury, I am authorized to act on behalf of the Rights Owner.

We are notifying you of infringement of the Rights Owner’s rights under the Copyright Act and counterpart laws around the world at the following location(s):

https://marketplace.secondlife.com/p/RankPins-2353-2366/3429749
https://marketplace.secondlife.com/p/Uniform-Catsuit-Science/3370711
https://marketplace.secondlife.com/p/RankPins-2367-Nemesis/3429738
https://marketplace.secondlife.com/p/Uniform-2369-Command/3365364
https://marketplace.secondlife.com/p/Uniform-Catsuit-Command/3370709
https://marketplace.secondlife.com/p/Uniform-2353-Deluxe/3360135
https://marketplace.secondlife.com/p/Uniform-2373-Science/3367950
https://marketplace.secondlife.com/p/Uniform-2373-Command/3367944
https://marketplace.secondlife.com/p/Uniform-2369-Operations/3365370
https://marketplace.secondlife.com/p/Uniform-2353-Command/3360086
https://marketplace.secondlife.com/p/Uniform-2373-Flag/3367952
https://marketplace.secondlife.com/p/Uniform-2373-Deluxe/3367938
https://marketplace.secondlife.com/p/Uniform-2353-Science/3360108
https://marketplace.secondlife.com/p/Uniform-Catsuit-Flag/3370703
https://marketplace.secondlife.com/p/Uniform-2390-Command/3369487
https://marketplace.secondlife.com/p/Uniform-2369-Deluxe/3365386
https://marketplace.secondlife.com/p/Uniform-Catsuit-Operations/3370706
https://marketplace.secondlife.com/p/Uniform-2390-Science/3369532
https://marketplace.secondlife.com/p/Uniform-2390-Flag/3369556
https://marketplace.secondlife.com/p/Uniform-2353-Flag-B/3360132
https://marketplace.secondlife.com/p/Uniform-2390-Operations/3369511
https://marketplace.secondlife.com/p/Uniform-2373-Operations/3367947
https://marketplace.secondlife.com/p/Uniform-2369-Science/3365376
https://marketplace.secondlife.com/p/Uniform-2353-Operations/3360119
https://marketplace.secondlife.com/p/Uniform-2353-Flag-A/3360126
https://marketplace.secondlife.com/p/Uniform-2373-Demo/3367939
https://marketplace.secondlife.com/p/Uniform-2369-Demo/3365357
https://marketplace.secondlife.com/p/Uniform-Catsuit-Demo/3370696
https://marketplace.secondlife.com/p/Uniform-2353-Demo/3360041
https://marketplace.secondlife.com/p/Uniform-2390-Demo/3369477
https://marketplace.secondlife.com/p/Combadge/3429829
https://marketplace.secondlife.com/p/Constitution-Class-Starship-Bridge/206531
https://marketplace.secondlife.com/p/Type-6-Shuttlecraft/3457381

We have a good faith belief that this material is not authorized by the Rights Owner, its agents or the law.

To the extent that the Digital Millennium Copyright Act, 17 U.S.C. § 512(c) (the "DMCA") applies to your service, if at all, we hereby request that you act expeditiously to remove or disable access to the identified material. 

Should you need additional information, please contact me at the telephone number or email listed below.

Nothing in this letter shall be construed as a waiver or relinquishment of any right or remedy possessed by the Rights Owner, or any affiliated party, all of which are expressly reserved.

Sincerely Yours,

Lisa M. Cattan
CBS | Counsel, Intellectual Property
51 West 52nd Street | New York, NY 10019
(212) 975-4264 | lisa.cattan@cbs.com

Chris Ellis Jr.
CBS | Intellectual Property Enforcement Clerk
51 West 52nd Street | New York, NY 10019
(212) 975-8920 | chris.ellis@cbs.com

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51 West 52nd Street
New York, NY 10019

On behalf of Lisa Cattan

October 25, 2012

Dear Mr. Pontchartrain:

Thank you for your response and inquiry. Enclosed for your information is the DMCA notice CBS submitted to Linden Research, Inc. 

CBS Studios Inc. (“CBS”) is successor in interest to various rights of Paramount Pictures Corporation and owner of all rights to the television series STAR TREK and related series (collectively, the “Series”). CBS’ rights in the Series include trademarks, logos, designs and numerous copyrights in videos, images, sounds, sets, props, ships’ names and designs, costumes, the characters, ranks and other original elements appearing therein (collectively, the “Properties”).  In addition, CBS owns all merchandising rights associated with the Series, and as rights owner, CBS is obligated to police and protect its properties against unauthorized users.

Based on our review of your numerous listings on the Second Life Marketplace at https://marketplace.secondlife.com/stores/6116, it appears that you are making a business of creating content for the Second Life virtual game, which incorporates CBS’ valuable intellectual property rights in the content itself and promotion thereof (the “Infringing Products”). A sample list of the Infringing Products is provided below:

https://marketplace.secondlife.com/p/Galileo-Shuttlecraft/3316217
https://marketplace.secondlife.com/p/Elevator-Voyager-Turbolift/206440
https://marketplace.secondlife.com/p/Networked-Replicator-System/206572
https://marketplace.secondlife.com/p/Grid-Wide-Transporter-Voyager/206451
https://marketplace.secondlife.com/p/Elevator-Galaxy-Class-Turbolift/206445
https://marketplace.secondlife.com/p/Galaxy-Class-Bridge-Set/206492
https://marketplace.secondlife.com/p/Galaxy-Class-Holodeck-Shell/206547
https://marketplace.secondlife.com/p/Galaxy-Class-Sickbay-Set/206511
https://marketplace.secondlife.com/p/Galaxy-Class-Engineering-Set/206530
https://marketplace.secondlife.com/p/Destroyed-Starship-Bridge/206528
https://marketplace.secondlife.com/p/Akira-Class-Bridge-Set/2227371
https://marketplace.secondlife.com/p/Voyager-Sickbay/2233889
https://marketplace.secondlife.com/p/Type-70-Form-Type-6-Shuttlecraft/3483066
https://marketplace.secondlife.com/p/Elevator-Classic-Turbolift/2632312
https://marketplace.secondlife.com/p/USS-Pasteur-Bridge-Set/2227392
https://marketplace.secondlife.com/p/Grid-Wide-Transporter-Klingon/2227482
https://marketplace.secondlife.com/p/Voyager-Transporter-Room/3068692
https://marketplace.secondlife.com/p/Comm-Station-Combadge-Free-Addon/1236249
https://marketplace.secondlife.com/p/USS-Sutherland-Bridge-Set/2348363
https://marketplace.secondlife.com/p/Constitution-Class-Holodeck-Shell/3389598
https://marketplace.secondlife.com/p/Elevator-Pegasus-Lift/4097412
https://marketplace.secondlife.com/p/USS-Valkyrie-Bridge-Set/206555
https://marketplace.secondlife.com/p/Galaxy-Class-Astrometrics/2226662
https://marketplace.secondlife.com/p/Romulan-Warbird/206522
https://marketplace.secondlife.com/p/Galaxy-Class-Junior-Officers-Quarters/2229135
https://marketplace.secondlife.com/p/Galaxy-Class-Hallways/206527
https://marketplace.secondlife.com/p/Galaxy-Class-Senior-Officers-Quarters/2229121

Your unauthorized use of these Properties constitutes copyright infringement under the Copyright Act, and counterpart laws around the world, and trademark infringement, false designation of original, misappropriation and unfair competition under the Lanham Act and applicable international laws.
CBS appreciates your interest in and enthusiasm for the Series.  However, we must object to the Infringing Products.  While CBS is entitled to seek damages from you for your prior infringing conduct, should you agree to the following terms, CBS will agree to refrain from seeking damages for Infringing Products sold prior to your notice of our claims:
1.    Immediately cease all creation, distribution, promotion and sales of the Infringing Products and destroy all materials used to create unauthorized copies thereof,
2.    Refrain from advertising, selling and/or posting the Infringing Products in any format on the Second Life Marketplace, and at any other websites or locations where you may be offering and/or selling the Infringing Products; and
3.    Provide a written undertaking that you will refrain from these actions in the future.

We trust that you understand CBS’ concerns regarding the infringement of its rights and that you will cooperate fully with us without the need for further action.

Nothing in this letter shall be construed as a waiver or relinquishment of any right or remedy possessed by CBS Studios Inc., or any affiliated party, all of which are expressly reserved.

Sincerely Yours,

Lisa M. Cattan
CBS | Counsel, Intellectual Property
51 West 52nd Street | New York, NY 10019
(212) 975-4264 | lisa.cattan@cbs.com 

Chris Ellis Jr.
CBS | Intellectual Property Enforcement Clerk
51 West 52nd Street | New York, NY 10019
(212) 975-8920 | chris.ellis@cbs.com