By STEPHANIE POTTICK, ESQ., Pottick Law PC and Protection Success
Welcome to another version of Thunderdome! Just kidding – welcome to the Metaverse, a similar, separate, fictional place where new battles are brewing!
Many companies are creating their own virtual worlds where people can participate, play, transact business, and more. The company not only displays and sells virtual products, but also sells real-world products through purchases in the virtual world. For example, ELF Cosmetics sells its physical products in Roblox and provides those customers with virtual versions of the products they purchase.
Intellectual property rights protection: straddling two worlds
Whether in the physical or digital world, intellectual property (IP) is an asset that every company must consider protecting and enforcing.
You may know how to protect intellectual property rights such as trademarks, copyrights, and patents in the real world by filing applications with the appropriate government agencies, but how do you protect intellectual property rights in the virtual world? While established laws and cases cover intellectual property rights in the physical world, the virtual world is relatively new and the law needs to keep up. But for now, filing with these government agencies can also help you protect your intellectual property rights in the virtual world.
Most companies should consider a strategy that includes protecting intellectual property rights in the virtual world. Consider these factors:
trademark: The USPTO provides protection for virtual goods and services for certain classes of goods and services.
They include:
- Class 009 available for download
virtual items - Retail Sales Category 035 Related to Virtual Goods
- Class 041 non-downloadable virtual goods or services
While other categories may apply, these are the most common, especially in the toy and licensing industries.
Example: Nike offers category 025 footwear protection for physical footwear, in addition to many other categories. To protect its brand in the Metaverse, Nike applied to protect other classes, including Class 009 for downloadable virtual shoes, Class 041 for non-downloadable virtual shoes, and Class 035 for retail services featuring virtual shoes.
copyright: Obtaining a copyright registration protects creative aspects such as designs, logos and content. You can use this copyright to help fight copyright infringement in virtual worlds.
patent: Similar to copyrights, obtaining a patent registration may not specifically mention an exact virtual product or service, but it will protect other aspects of your creation or product that you can use to help enforce your intellectual property rights.
Intellectual property rights enforcement
Owning intellectual property is the first step, protecting it is the second, but your company should also develop an execution strategy for the real and virtual worlds. You may not decide to go after every infringer, but companies should at least pursue meaningful infringements to maintain a strong brand.
By having one or more of the above intellectual property protections, companies can leverage a variety of resources, including but not limited to the intellectual property infringement policies of third-party platforms.
bottom line
Metaverses are not going away, so brands must adapt and incorporate methods to thrive in this new medium. This certainly includes developing a thoughtful strategy regarding intellectual property rights. Don’t fall behind – find ways to be proactive and set yourself up for success in the real and virtual worlds!
*Disclaimer: This article is for informational purposes only and is not intended as legal advice.
A version of this feature was originally published in The Toy Book’s Fall 2024 Los Angeles Toy Preview issue. Click here to read the full article! Want to receive a printed copy of The Toy Book? Click here to view subscription options!
