Are Your Trademarks "Meta" Enough? Protecting Trademarks In The Metaverse

• Published date: 22 July 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf Theiss
• Author: Mr Georg Kresbach, Jakub Pietrasik and Peter Ihasz

Trademarks in the metaverse

Despite undeniable uncertainty in defining its parameters, one thing seems certain. The metaverse is here to stay. The concept appears simple: a virtual space that allows its users to experience the internet or practically any digital content in the most immersive way possible. In practice, however, the metaverse raises numerous questions that are similar to those faced at the rise of the world wide web. Amongst these questions, the notion of protecting existing brands and trademarks has received widespread attention in the digital community.

With the growing popularity of the metaverse and its digital open-world concept, there is an increasing number of alleged infringements involving existing trademarks and brands in an attempt to cash-in on their global reputation or use them as a base for creative artwork. Naturally, the registered holders of such trademarks and brands are wary of this creative phenomenon that is rapidly spreading in the digital world and want to retain control over any such uses of their intellectual property.

In such open and decentralized environments, owners of trademarks will have to carefully consider creating their own digital presence through; new or expanded trademark registrations; more effective mechanics for enforcement and policing infringing behavior; remaining mindful of licensing arrangements governing their new digital brand; and not scaring away layman consumers with overly complex usage boundaries.

By way of example, just recently, in February 2022 Nike filed a lawsuit against StockX (an online marketplace and clothing reseller) for making unauthorized use of its sneakers and their designs in the form of NFTs. The NFTs were serving as digital receipts used to authenticate the goods sold. However, Nike claimed the separate NFTs constituted digital goods, and thus made consensual use of their intellectual property. The suit, still ongoing, was filed on the alleged points of trademark infringement and dilution, with a subsequent amendment to the sale of counterfeit goods. Interestingly, in the meantime, Nike has also acquired metaverse player RTFKT at the end of 2021, essentially entering the digital world of the metaverse with its own NFT studio. Another interesting case was seen with respect to the digital reproduction of the Hermés Birkin bag by American artist, Mason Rothschild, which was minted as an NFT and received great media attention. The NFT of the digital art piece was later...