The Metaverse it is a concept that has existed for many years now. The term “Metaverse” was, in fact, first coined by Neal Stephenson in 1992 in the story Snow Crash, but only in recent years has this three-dimensional virtual universe in which users can interact with each other and create content become increasingly popular and well-known.
Intellectual property rights in the Metaverse: the story of the “Telegatto”
With the advent of the Metaverse, numerous companies rushed to digitize your goods and services to make room for something new virtual market full of opportunities. This digitalisation has led the actors involved to protect their own intellectual property rights through - at least, in the first instance - the filing of trademark registration applications for products/services relating to this new reality, with the emergence of a series of new problems.
Interesting, in this regard, is the decision issued on 4 July 2023 by the European Union Intellectual Property Office (EUIPO) which partially rejected the European Union trademark application no. 018730117 relating to the iconic “Telegatto” (the famous statuette with which the winners of the "International Grand Prix of Entertainment" promoted and organized by the weekly magazine TV Sorrisi e Canzoni were awarded) deposited by the company Mondadori Media SpA to distinguish numerous virtual products and services relating to the Metaverse (such as NFTs, products digital downloadables, etc.) including downloadable digital artwork, digital trading cards, figurines for use in the metaverse, and so on.
The decision, which became final, led to a partial refusal of the trademark for some of the products and services that distinguishes. Beyond this, however, it is interesting because - among the various topics covered - it states that digital products must be examined in the same way as related physical products as a fundamental aspect of digital products is to emulate the fundamental concepts of the respective physical products and, therefore, the principles applicable to the latter must also be applied to the former. In fact, the virtual market is a sector open to any public and reflects, in the virtual dimension, physical reality. Therefore, both consumers and the reference market sector must be considered the same as that of the "real" market, i.e. the average consumer.
The Metaverse and the average consumer
The decision in question considers the metaverse a virtual platform which is made available to any average consumer, just as video games and other virtual products are offered. It follows, then, that consumer perception for real-world goods must be applied to equivalent virtual goods.
However, the need for companies to take action remains confirmed protection of its intellectual property rights in the new digital world. The Italian company (like many other companies in the world of publishing, entertainment, fashion and beyond) has, in fact, filed other trademark applications relating to virtual and digital products and services to obtain the widest possible protection within this virtual universe: see, among many, the European Union trademark registration no. 018818422 for the brand “GialloZafferano” (figurative).
Enforcement methods on the Metaverse
Alongside the filing of trademark (and/or design) applications, another fundamental aspect of protection in the Metaverse concerns the possible enforcement methods.
The Metaverse involves, in fact, the creation and distribution of a large amount of digital content, such as virtual clothing, accessories, digital art, and so on. This also implies the possibility for the subjects who operate in this virtual reality to unduly exploit the distinctive and attractive value of the distinctive signs of the various brands to create confusion and sell their products more easily, exactly as happens in the real world.
To overcome these problems it is necessary, on the one hand, that the various Metaverso platforms take action to make suitable tools available to rights holders for removal of violations and, on the other hand, that the owners implement activities aimed at repression of the violations themselves.
On the first point, numerous platforms (such as Fortnite, Decentraland, Roblox, Horizon Worlds, to name a few) have already implemented procedures (defined as notice&takedown) which allow the rights holder to report to the platform the content in violation of his right of intellectual property so that the latter can promptly obscure (because it is not a real removal) the infringing content.
Likewise, companies have often acted actively and directly to remove violations of their rights identified on the platforms.
In this regard, there are numerous already established disputes – in this short period of time – by companies to protect their rights. Among the most important are: Nike Innovate CV against e-commerce platform StockX; Epic Games, Inc. (creator and owner of the video game “Fortnite”) against artist Kyle Hanagami; Hermès International against digital artist Mason Rothschild (in the famous “Metabirkins” case).
On this point it is worth specifying, however, that it is not always possible to identify the person who committed the violation and, consequently, it often becomes very difficult to act without the help of the platform.
