Intellectual Property Protection Forms

In recent years, while non-fungible tokens (NFTs) are in intense discussions in public, the associated trademark registration activity has exploded. In the U.S., just in January-February 2022, the number of NFT trademark applications increased by 150% compared to the whole year of 2021. Despite the trademark registration remains high, in the metaverse era, the current trademark system is clearly insufficient to provide effective and overall IP protection for virtual goods and services which often involve various content forms such as images, videos, sounds, and 3D. However, the number of trademark applications in the form of animation trademarks, sound trademarks, and 3D three-dimensional trademarks is still relatively small, and relevant protection systems have not been generally established in every country or region; and for a new thing that can interact with us, for example, virtual items that can be touched and felt with gloves are not protected by any of the current types of non-traditional trademarks.

Some enterprises tend to protect their virtual goods and services by copyright, however the lack of copyright in identifying the source of goods and services is also a problem plaguing rights holders. In a word, it’s hard for a single trademark law or copyright law to fully satisfy the needs of intellectual property protection in the metaverse era; we may need a new form of intellectual property protection which can play the role of source identification, and provide protection from the creation aspect.

Jurisdiction Disputes

How are the jurisdiction of legal disputes occurring in virtual space divided in the real world? The recent NFT trademark infringement case between Hermès and MetaBirkins has inspired people. The defendant in the case was a resident of California, but the case was heard in the Southern District Court of New York - as the registered place of business of OpenSea, the initial platform for the sale of the NFTs involved in this case, is in New York. The plaintiff also claimed that the injuries caused by the alleged torts actually occurred in New York. Therefore, though OpenSea was not a party in the case, the plaintiffs ultimately established jurisdiction in the Southern District of New York court. In the future, how to deal with jurisdictional issues in disputes related to virtual goods and services? The practical development of various countries remains to be seen.

Creator Identities

The Metaverse not only virtualizes virtual goods and services, it also accelerates the process of creator identities virtualization to some extent. Artificial intelligence (AI) technology now plays the role of developing and maintaining the infrastructure of the metaverse, and its creation of works persist in any state of the metaverse. There is no doubt that designating a creator for such a work requires breaking existing rules and concepts. Can AI be given a creator? Extending the question to the patent field, can AI be given the identity of an inventor? It will be such an interesting topic for quite a long time.

Trademark Classification System

The Nice Classification System, established in the 1950s, today is still in domination of trademark classification practices in most countries and regions. However, it clearly cannot keep pace with the Metaverse. Nowadays, almost all trademark applications for virtual goods and services are classified in Category 9 "Electronic Computers and the Peripherals," which becomes currently the category with the largest number of U.S. trademark filings. Just last year, trademark filings in this class accounted for nearly 15%. To this end, the USPTO has tried many times over the past few years to redefine the scope of Category 9 via global cooperation with little success. At present, the scale of trademarks in this class is still in expansion.

Will there be a major reform for the trademark classification system in the future? For example, when jewelry products belong to category 14 and catering services belong to category 43, is it rational to make virtual jewelry and virtual restaurants belong to category 9? Should they respectively return to category 14 and category 43 for the unification of trademark classification between physical and virtual counterparts? We hope that the legal and regulatory authorities will finalize the decision in the near future.

From IPRdaily

August 26th, 2022