Court: terrains can be copyrighted

What happens when a virtual world designer sues for unauthorized use of a virtual island? The case involved the question of whether terraforming is protected by copyright law, and whether a terrain purchased for use in Second Life can be exported to OpenSim.

The results:

  • Yes, terraforming is protected by copyright law
  • Just because the customer is an educational institution, it doesn’t mean they can automatically claim “fair use” on terrains
  • Customers and vendors need to be clear up front about what content is being sold, and how long and where it can be used


In late September, a New York district court denied summary judgment and cleared the way for a full trial on a virtual world copyright infringement case, and the parties involved settled the case in mid-December.

This case stemmed from a payment dispute for digital design services related to  Second Life. For those unaware with Second Life, the court described it as an “internet-based simulation in which users appear via digital characters called ‘avatars’ and interact with a computer-generated environment.”

The operators of Second Life (Linden Research, Inc.) sell parcels of virtual space called islands that essentially begin as blank slates that look like flat green rectangles. Second Life users can then change these virtual landscapes and populate their island with objects, buildings, and other things they create or purchase–a process called terraforming.

As a teacher, defendant Cindy Sheehy saw Second Life as an educational opportunity and worked with her school’s technical staff to purchase three islands in Second Life that would later be terraformed into a virtual classroom for her students. She met plaintiff Fred Fuchs at a Second Life convention in San Francisco, and ultimately hired his FireSabre consulting company to create digital content and terraform her virtual islands.

FireSabre terraformed a total of six islands for the defendants, referred to as “Ramapo Islands”:

(1)  “The First Three Islands” created in 2005-06, and

(2)  “The Second Three Islands” created in 2007-08.

Unfortunately, the parties didn’t nail down the specific details of this relationship. Sheehy claims that Fuchs was a volunteer for the First Three Islands, whereas Fuchs claims that he was an independent contractor hired to create the content for $10,000. But the two parties never executed a formal written contract, let alone discuss who owned the intellectual property rights to this “Ramapo Islands” project.

The school district did eventually pay Fuchs $5,000 for the terraforming of the Second Three Islands, but the parties dispute whether that sum effectively purchased a copy of the content or merely a license of limited duration. Fed up in 2008, Fuchs submitted forty screenshots of the islands to the Copyright Office and registered his company’s digital artwork copyright. He then contacted the defendants and told them that the continued use of any of FireSabre’s Second Life content after August 1, 2008 would be “unlicensed.”

After that date came and went, FireSabre submitted several DMCA takedown requests to Linden Research. It also alleged that the defendants created a copy of the Second Life terrain and exported it to OpenSim. Ultimately, FireSabre sued for copyright infringement.

‘Terraforming’ is Copyrightable Under Section 102

The defendants first attacked the validity of Firesabre’s terraforming copyright, arguing that terraforming should not qualify for copyright protection because it is not “fixed in any tangible medium of expression” within the meaning of § 102. The court did not buy this argument and compared the terraforming to digital images in video games:

Plaintiff’s designs existed on Linden’s data servers and were visible within Second Life for some period of time . . . clearly of more than “transitory duration.” The work was “sufficiently permanent . . . to permit it to be perceived” by the students who interacted with the Ramapo Islands simulation.

The court also shot down the argument that the terraforming was not “sufficiently permanent” because students were able to alter it. Defendants were similarly unsuccessful in arguing that the terraforming was not within the scope of FireSabre’s copyright because it was not prominently featured in the screenshots plaintiff submitted to the Copyright Office.

Ramapo Islands in Second Life. (Image courtesy Technology & Marketing Law Blog.)

Ramapo Islands in Second Life. (Image courtesy Technology & Marketing Law Blog.)

Dispute Over Authorization Precluded Court From Granting Summary Judgment

In its complaint, FireSabre alleged two instances of infringement: (1) the unauthorized display of the “Second Three Islands” after August 1, 2008, and (2) the unauthorized copying of the “First Three Islands” into the OpenSim environment in early 2011.

Ultimately, the court denied FireSabre summary judgment for both instances.

With respect to the First Three Islands, the court claimed that it had not been presented with enough information to give summary judgment on the question of substantial similarity.

As for the Second Three Islands, the dispute over authorization prevented summary judgment for FireSabre:

While defendants have done a less-than-admirable job of teeing this issue up for the Court’s attention, they do assert that Sheehy believed the district had purchased the right to the continued use of the content plaintiff had created for the Second Three Islands at her request.

Sheehy and the school district claimed that the $5,000 payment to FireSabre authorized them to continue using and displaying that content. The court gave considerable weight to this question, and noted that such an authorization could have been obtained by an implied license, under the first sale doctrine, or as a volunteered gift. The lack of evidence as to these three possibilities ultimately influenced the court to hold off on granting summary judgment.

Defendants unsuccessful in claiming fair use

In addition to the “authorization via implied license” defense, Sheehy and the defendants claimed that their continued use of the virtual islands constituted fair use. But one by one, the court laid out its rationale as to why each fair use factor weighed against a finding of fair use.

1) Purpose and Character of the Use: For this factor, the court relied on the distinction as described inHarper & Row:

[t]he crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.

Despite acknowledging that “Defendant’s use of the material in question [was] primarily . . . for nonprofit educational purposes,” the court found that the allegations more closely resembled misappropriation because the defendants stood to gain from exploitation of the digital content without paying the customary price.

2) Nature of the Copyrighted Work: The court quickly weighed this favor against the defendants, noting that FireSabre’s digital artwork “is within the creative ‘core of intended copyright protection’ for which fair use is more difficult to establish.

3) Amount and Substantiality of the Use: The court noted that FireSabre has produced evidence, uncontroverted by the defendants, that the amount of content used by the defendants was a substantial part (if not the entirety of) FireSabre’s copyrighted works.

4) Effects of the Use on the Market for or Value of the Work: This factor also weighed against fair use, as the court reasoned that “the market in which Defendants’ use of the material occurred is the same market that [FireSabre] is targeting in creating its works in the first place.” By continuing to use the content, the defendants chose not to avail themselves of the “ready . . . means to pay for the use” in the Second Life market.

Since none of these factors weighed in Defendants’ favor, the court denied defendants’ cross-motion for summary judgment. All in all, the court struck down both parties’ summary judgment motions and set the stage for this strange case to proceed to trial.

The lesson here: don’t stiff your virtual landscaper!

Actually, the bigger lesson (too often ignored) is to make sure you have an agreement nailed down and in writing before beginning a time-intensive project. Judging by the earliest entries for FireSabre in the Internet Archives (circa 2007), it seems that the business was in its infant stages and thus less likely to have a firm process in place. But absent any documents outlining the relationship, the “authorization” question loomed heavily over this case and all but prevented summary judgment.

In fact, the major questions here were more factual related and less about the application of copyright law in virtual worlds. The defendants’ attack on copyrightability did not stick, nor did the fair use defense. It’s pretty clear that even educational uses of copyrighted material will not be protected when you’re using the entirety of the work and not paying for it.

As always, we must ask ourselves whether proceeding with a full trial is worth it.  Something tells me that when you’re knee-deep in litigation over a few virtual islands, the answer is no. Then again, I can only speak to this issue from a First Life perspective.

(This article is adapted with permission from the Technology & Marketing Law Blog.)'

Jake McGowan

Jake McGowan is a third-year law student at Santa Clara University and a regular contributor to the Technology & Marketing Law Blog. He has recently worked in the legal department at Juniper Networks in Sunnyvale, CA. Among other possibilities, he is pursuing a career in technology licensing.

7 Responses

  1.' Minethere says:

    “The school district did eventually pay Fuchs $5,000 for the terraforming of the Second Three Islands”, goes off to charge 50 times the amount I now charge for terraforming [but only to secondlife people as apparently they feel that if you pay more then you get more…and, one assumes, you get better quality, too]

    Knows this is supply and demand, at it’s most finest…[I shall be rich!!!]

    •' Nathan Adored says:

      If I’m reading this right, they’re saying the nonprofit paid a terraforming outfit a fee of US$5000 (as apposed to L$5000), though the terraforming outfit was asking US$10,000. Either one of those strikes me as exorbitant. It also sounds very much like the issue was handled as a work-for-hire, until after the fact, when the actual individual who did the (exorbitantly priced) terraforming itself…. got greedy, and looked for a loophole where he could demand the entire US$10,000 for himself.

      So, I’d say the real moral of this story is… don’t do business with outfits wanting to charge exorbitant prices for low-complexity things like basic landmass shapes. They might get more greedy later.

      • This was my first reaction, as well. $5,000 for terraforming? For a school? Maybe for an entire build, but it’s way too much for a terrain.

        Especially since there are plenty of great terrains available already, many free or at very low cost. And a terrain isn’t much of a differentiator of a region — unless you have a particularly pretty mountain range, does anyone even notice the terraforming?

        Finally, there are so many tools available that can generate terrains for you, say from US Geological Survey data, that someone proficient with the technology and create one in minutes, and, with a little in-world clean-up time, can have it ready to go in a couple of hours.

        Meanwhile, nobody, nobody should EVER purchase a terrain under a limited use license. You will modify the terrain. You’ll change the coast line, or add a river or pond — or take one out. You’ll flatten areas for buildings. Over a time, the terrain will become more and more your work. You want to be able to save that work!

        •' Nathan Adored says:

          Thing is, did he try to tack on the purported limited-use clause *after* *the* *fact*? It kinda sounds to me like he did. oO

          • Without a written agreement, no way to know. Both could be right. When you’re just talking about stuff, often each side hears what they want to hear.

            That’s why even with a written contract, you want to add in a line somewhere to the effect: “This is the contract. This is it. If it’s not written down here, it’s not part of the agreement.” So people can’t add in stuff verbally like, “Well, we have to say that for legal reasons, but, of course, we won’t mind if you do X and Y.”

            If you don’t mind, put it in the contract. If you do mind, put it in the contract.

            No matter how much time it takes up front to hash things out, it will be MUCH MUCH less than the time you’d otherwise have to spend afterwards, cleaning stuff up. Plus the legal costs, of course!

            I was surprised that they even bothered to go to court over $5,000. They probably spent more than that on the lawyer. Maybe, by that time, it had become a matter of pride.

          •' Minethere says:

            Well, typically, there will be assessed damages awarded, and possibly punitive damages also + attorney costs + court costs…or at least asked for in the original pleading, regardless of the final ruling.

            So the total award could actually be higher than the noted numbers.

            And even if awarded, appeals could change it all.

            Not positive on this as my memory of such things is getting pretty sketchy [plus I am tired and probably should not even comment]…tho I guess the article is written by a Law Student who could say for sure.

  2.' Samantha Atkins says:

    We need this like a hole in the head. Look, we are headed rapidly for technological advances where ever human being has a perfect fidelity record of everything they see and hear. Eventually it is internal to their own head. It is already part of their ubiquitous device extended self. Do you really want ownership tags all over your own mindspace and brain content? I don’t see how that gives any kind of viable path to the future.

    Already today the situation is quite horrible to make any kind of film or video without chasing down lots and lots of agents and lawyers. Already it is doing much damage to our creativity and the amount and kind of work available.

    I don’t know about you but increasingly I think it pictures, snippets of music, scene cuts from movies – and I am not even a creative by nature. Our brains simply seem to be shifting in that direction. Do we need to ride herd over our own minds or only if we take that mental content and mash it up to share with friends or to share our brain state?

    Basically I think we need to get to if you can see it or hear it then you can do whatever you want with it short of claiming you created it. I don’t see how anything else is going to be livable going forward. Yes I know a lot of business models can’t survive that. But I think letting go or modifying those is a far smaller price to pay than the basically criminalizing or threatening with legal action almost everyone.