Trademark Law in the Metaverse – 1.1 Million US Dollars for the “MetaBirkin“
The first well-known fashion brands have extended their trademark protection to digital goods or are already selling digital goods in the metaverse. Trademark law has thus arrived in the virtual world. But what legal issues need to be considered now?
In recent weeks, the “MetaBirkin” by the artist Mason Rothschild has received particular attention. The latter has simulated more than 100 individual NFTs inspired by the Birkin with faux fur and different colors and offered them for sale on the OpenSea platform with a retail value of $1.1 million. The fashion house Hermés saw its trademark rights infringed by the virtual bags, as it had not agreed to the creation of the Birkin Bag in the metaverse.
Whether there is actually a trademark infringement here will probably no longer be clarified in court, as the NFTs have already been removed. Nevertheless, the MetaBirkins make it clear that companies should now at the latest pay attention to the scope of protection of their trademarks and, if necessary, extend it to virtual goods.
However, it is still unclear how the offer of virtual goods is to be classified under trademark law. For example, the sale of virtual goods can be regarded as downloadable software (class 9) or as a service (class 41 or 42). This gives rise to the risk that, especially in international legal relations, divergent decisions will be made depending on the trademark office.
It is also decisive that in the European legal area, use for the registered goods/services must take place in the virtual space within the grace period of 5 years so that the trademark is not ready for cancellation.
It is also questionable when a trademark infringement is to be assumed in the metaverse and the trademark is also used with reference to origin, and when it is only a matter of a trademark mention without reference to origin.
Even though the metaverse is still in its infancy, it is already clear that trademark owners must be prepared for possible trademark conflicts with digital products and should make an early effort to secure their trademark rights for the virtual goods as well.