by STEPHANIE POTTICK, ESQ., Pottick Law PC & Protect for Success
Welcome to another edition of Thunderdome! Just kidding — welcome to the metaverse, a similar, self-contained, fictional place where new battles are brewing!
Numerous companies are creating their own virtual worlds where people can come to engage, play, transact business, and so much more. Not only do companies display and sell virtual products, but they also sell their real-world products through purchases made in the virtual world. Case in point, E.L.F. Cosmetics sells its physical products in Roblox and also gives those customers a virtual version of that purchased product.
IP Protection: Crossing Both Worlds
Whether it’s in the physical world or a digital world, intellectual property (IP) is an asset every company must consider protecting and enforcing.
You probably know how to protect IP like trademarks, copyrights, and patents in the real world by filing with the appropriate government agencies, but how do you protect IP in the metaverse? While established laws and cases cover IP in the physical world, the metaverse is relatively new, and laws will need to catch up. But for now, filing with those same government agencies also helps you protect your IP in the metaverse.
Most companies should consider a strategy that includes protecting IP in the metaverse. Consider these factors:
Trademarks: There are some specific classes of goods & services that the U.S. Patent and Trademark Office offers to protect virtual goods & services.
They include:
- Class 009 for downloadable
virtual goods - Class 035 for retail sales related to virtual goods
- Class 041 for non-downloadable virtual goods or services
While other classes may apply, these are the most prevalent, especially in the toy and licensing industries.
Example: In addition to numerous other classes, Nike protects footwear in class 025 for physical shoes. To protect its brand in the metaverse, Nike filed to protect additional classes, including class 009 for downloadable virtual shoes, non-downloadable virtual shoes in class 041, and retail services featuring virtual shoes in class 035.
Copyrights: Getting a copyright registration protects creative aspects, such as designs, logos, and content. You can use that copyright to help with enforcement against infringement in the virtual world.
Patents: Similar to copyrights, getting a patent registration may not specifically call out exact virtual products or services, but it will protect other aspects of your creation or product that you can use to help enforce your IP rights.
IP Enforcement
Owning IP is the first step, protecting it is the second step, but your company should also have an enforcement strategy for both the real and virtual worlds. You may not decide to go after every infringer, but companies should, at minimum, pursue meaningful infringement to maintain a strong brand.
By having one or more of the IP protections mentioned above, companies can take advantage of various resources including, but not limited to, third-party platforms’ IP infringement policies.
The Bottom Line
The metaverse isn’t going anywhere, so brands have to adapt and incorporate ways to thrive in this new media. That certainly includes having a thoughtful strategy when it comes to IP. Don’t get left behind — think of ways you can be proactive to set yourself up for success in both the real and virtual worlds!
*Disclaimer: This article is for informational purposes only and not intended as legal advice.
A version of this feature was originally published in The Toy Book’s 2024 LA Fall Toy Preview Issue. Click here to read the full issue! Want to receive The Toy Book in print? Click here for subscription options!
