Metaverse and design law
In 2022, many brands, in particular in the luxury sector, have started to explore the metaverse.
The metaverse, etymologically “beyond the universe”, is a persistent digital environment in which users interact through avatars who can move around, meet friends, or buy products.
In this digital environment, virtual products may be protected by design law, as long as they meet both novelty and individual character conditions.
This intellectual property right grants protection on the appearance of the products, more specifically their shapes, lines, and contours.
While the issue of trademark protection in the metaverse has been widely debated, the issue of designs has been less explored. However, the analysis of the current legislation relating to designs raises several questions as to its application to a digital environment such as the metaverse.
1. The protection of virtual products
Article L.511-1 of the French Intellectual Property Code (hereinafter the “CPI”) defining a design does not specifically target digital products. A product is “any industrial or craft object, in particular parts designed to be assembled into a complex product, packaging, presentations, graphic symbols and typographical characters, excluding however computer programs.” The definition of products provided by Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs (hereinafter “the Regulation) is identical.
However, virtual products are not deprived of protection in practice, since French and European offices accept to register graphical user interfaces as designs. In this regard, the new edition of Locarno Classification, which came into force on 1 January 2023, now includes “augmented reality graphical user interfaces [for screen display]” (ID No. 105098) in class 14-°4, reflecting current developments in considering new digital environments.
However, a reform is necessary to formally clarify the definition of “products” and in particular the notion of “physical or virtual products” or “graphic symbols and typographic characters” of Article L.511-1.
The European institutions have been responsive to this need to legislate, since the proposed European Regulation No. 2022/0391 of 28/11/2022 specifies in its Article 3 that a “product” within the meaning of the Directive is “any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materializes in a digital form, including (…) graphical user interfaces”. The proposal for a Directive No. 2022/0392 on the legal protection of designs dated 28/11/2022 also provides this definition in its Article 2.
2. The representation of virtual products
Another difficulty lies in the representation of the design in view of its filing.
Indeed, when applying, it is necessary to file one or more representations of the design: only the represented elements will benefit from the protection. It is therefore recommended to submit several images of the design and to consider the product from different angles as the parts not visible on the representations will not be protected.
Pursuant to Article 4 of the Regulation (EC) No. 2245/3033 of the Commission dated 21 October 2002, implementing Council Regulation (EC) No. 6/2002 on Community designs “The representation of the design shall consist in a graphic or photographic reproduction of the design, either in black and white or in color.” This representation cannot contain more than seven different views of the design.
These requirements are unsuitable for the digital products that will be used in the metaverse, in 3D and often in motion. This implies the need to accept representations in other formats.
The proposals for European Regulation and Directive, currently under discussion, provide for a new definition of designs that includes the notion of animated object (Article 2 of the proposed Directive). This modification will facilitate the filing of designs for digital products.
3. Is use in the metaverse worth disclosure?
Access to protection is restricted for designs that meet both conditions of novelty and individual character.
According to Article L.511-3 of the French intellectual property code, a design is considered new if no identical design has been disclosed prior to the date of application for registration or the date of priority claimed.
Will the use of a virtual product in the metaverse be considered a disclosure of a registered design?
Considering current legal texts, the answer should be positive. Article L.511-6 of the French intellectual property code provides that a design is deemed to have been disclosed when the public has been able to become aware of it through “publication, use or any other means”. The use of the expression “any other means” could indeed cover the disclosure of the design by a digital product in the metaverse.
However, Article L.511-6 provides that there is no disclosure when the design could not reasonably have been known, according to the current business practice in the relevant sector, by professionals acting in the European Union, before the date of filing of the application for registration.
At this stage, the metaverse is a digital environment that is not extensively used. It is possible that professionals in certain sectors may not be aware of the use of a virtual product in the metaverse.
This issue will certainly be debated before the courts and decided on a case-by-case basis.
4. Use in the metaverse
The Community design, when protected, confers to its owner an exclusive right to use it and to prevent any third party from using it without his/her consent.
The current legal provisions do not prevent the owner of a design from prohibiting its use, without consent, in digital environments. Thus, a video game publisher may be liable for design infringement in the event of unauthorized reproduction of a design in a video game, provided that the design reproduced in the video game is sufficiently close to the registered design (Cass. com., 8 April 2014, No. 13-10.689: in this case, the infringement was rejected as the judges considered that although there were similarities between the design and the Ferrari branded vehicle, the design used in the video game was nonetheless endowed with its own appearance that could not produce the same overall impression on the informed observer as the registered design). This case law can be transposed to digital environments such as the metaverse.
According to Article 19.1 of Council Regulation (EC) No. 6/2002 of 2 December 2001, the term “use” means “in particular” the activities of “making, offering, putting on the market, or using a product which the design is incorporated or to which the design is applied” or “stocking a product” for the same purposes. The use of the expression “in particular” demonstrates the intention of the legislator not to restrict the specific uses of the design.
The issues that the metaverse raises in terms of designs are abundant.
Nevertheless, the current protection regime seems unsuited to this virtual world that is the metaverse. An adaptation of the current design regulation seems necessary to take into consideration the metaverse, as a new area for the exploitation of intellectual property assets.
This article was originally published on Blip! and was written by Boriana Guimberteau and Magali Courroye.
