IP Metaverse Series – Part III: Industrial Design Protection in the Metaverse

This is the third article in a four-part series on Metaverse IP exploring IP protections for Metaverse-related technology and consumer-facing brands (see our second published article “IP Metaverse Series – Part II: Patent Considerations”).

A major technological area in development is the so-called metaverse. The exact form the “metaverse” will take is not yet clear, as development is in its early stages. One of the unknowns is whether there will be a single “unified metaverse” or whether multiple metaverses will emerge as walled gardens implemented on competing technology platforms.

It is clearer that the metaverse will likely incorporate virtual reality (VR) and/or augmented reality (AR) to create virtual spaces for users to interact. Users of these spaces can adorn an avatar with virtual assets such as clothing or accessories, and can interact in various ways, such as buying virtual assets or exchanging these virtual assets with other users. .

While widespread adoption of the metaverse is still a long way off, intellectual property (IP) owners are already concerned about protecting their intellectual property rights from unauthorized use by third parties in the metaverse. As our colleagues at the brand have previously written here^[1], a number of brand owners are already expanding their brand portfolios to cover goods and services associated with the metaverse. Intellectual property owners also wonder if other intellectual property rights can protect virtual versions of their assets. One of these intellectual property rights may be industrial design rights.

An industrial design (called a design patent in the United States) is a type of intellectual property that grants an exclusive right to new aspects of an item’s appearance. The legislative scheme that creates this intellectual property right recognizes the public order benefit of protecting the ornamental aspects of articles, including their shape, configuration, color or pattern. The public policy objective of the industrial design rights regime recognizes that items can have aesthetic value that is expensive to create but easy to copy.

Under the US statutory regime, valid design patents require compliance with the article of manufacture requirement. There are similar requirements in Canada and other major jurisdictions. To comply with this requirement, applicants must show the design as applied or incorporated into a manufactured item. Industrial design laws have long recognized that software objects, including graphical user interfaces (GUIs), can be protected by these rights.

A notable example of design patents being used to enforce rights to software-generated graphical objects is Apple’s lawsuit against Samsung for infringement of Apple’s design patents for the design of its iOS home screen.^[2]. In the Apple vs. Samsung decision^[3], the Federal Circuit upheld a jury decision that included significant damages against Samsung for design infringement. Other examples of copyrightable ornamental designs in software include fonts^[4]and icons.

In jurisdictions with an item of manufacture requirement, design protection should be limited to protecting graphical user interfaces, fonts, icons, and other virtual objects as displayed on a screen of a computing device . This requirement limits design protection and its usefulness for protecting virtual objects.

The metaverse, and the virtual objects that will populate it, therefore present a challenge to current industrial design laws and practices, as effective protection requires recognition of virtual objects as items to which industrial design protection may apply (i.e. without limiting the protection to those objects displayed on a two-dimensional screen). To address this challenge, intellectual property offices in several jurisdictions have sought to change their practices to better protect virtual goods and other virtual objects.

Item of Manufacture Requirement – ​​United States

In the United States, 35 USC § 171 protects designs and requires that “[w]anyone who invents a new, original and ornamental design or manufactured article can obtain a patent for it. To comply with the manufactured item requirement, the USPTO required design patent applicants to show the design applied to or incorporated into a manufactured item.

As part of its review of virtual asset design protection, the USPTO conducted public consultations^[5] on this requirement. In this review, the USPTO examined public positions on the protection of “designs for projection, holograms, and virtual and augmented reality” (PHVAR). Such PHVAR designs are clearly relevant for effective industrial design protection for virtual assets in the metaverse.

Proponents of PHVAR design protections recognize that these virtual assets are new forms of ornamental objects generated by software analogous to GUIs, fonts and logos, which have been protected for decades. The requirement that the article be “tangible” is not an explicit requirement found in 35 USC § 171. Proponents argue that removing the requirement that a computer-generated icon be illustrated on a screen in the application A design patent would be an important step in protecting new and emerging technologies (and would support a technology-neutral design protection system).

Opponents of PHVAR design protections argue that virtual assets are not fundamentally new types of designs, and in many cases are just the virtual representation of a physical asset. Additionally, maintaining a connection to the manufactured item (i.e. the screen) serves as a warning and helps to distinguish ornamental from functional aspects. They argue that this provides an effective distinction between what is protected and what is prior art. With respect to anticipation, opponents have raised concerns about the lack of anticipation related to PHVAR in the United States. The implication is that allowing design patent applications for PHVAR may lead to the issuance of large numbers of design patents of questionable validity, which in turn could stifle innovation in the metaverse.

It is unclear whether the USPTO consultations will lead to any legislative changes related to the manufactured item requirement. What is clear is that many American companies are making significant investments in the development of metaverse technologies. In the long run, there will be pressures for intellectual property laws to support these investments to prevent unauthorized copying and encourage innovation.

Item of Manufacture Requirement – ​​Worldwide

Around the world, several key design jurisdictions have changed their design/industrial design patent laws to allow for better protection of virtual assets, which could include protecting those assets in the metaverse.

In April 2020, Japan revised its Designs Act^[6] to protect graphic images that are not stored on a physical device. These modifications make it possible to protect the images without requiring their representation on a display screen. The changes also provide design protection to images projected onto non-screen devices such as walls or floors, opening up the possibility of enhanced PHVAR protection for devices that provide VR/AR functionality in a particular room or space. . Graphic images must, however, be used in the operation of a device or displayed following a device performing its function.

Similarly, Korea has added graphic images to the design definition in its Design Patent Law^[7] in October 2021. These images may be copyrighted without including a display screen in the designs^[8]. Just like in Japan, images must be used in the operation of a device or have some kind of function.

European Union Registered Community Designs (RCDs)^[9] recognize graphical symbols and two-dimensional designs as products. This means that hardware such as screens and physical devices do not need to be shown in application drawings for digital designs. Although RCDs must name the category of products to which they apply, this is purely for classification purposes and should not limit the scope of protection.[^10].

China has enacted design patent legislation^[11] to bring it in line with other major jurisdictions. This includes protecting partial products, such as computer-generated images and graphical interfaces when displayed on a display screen. In addition to requiring a display screen in the drawings, the category of physical devices with which the images are to be used must always be fully listed in the application. A sign that Chinese courts are moving away from connecting to a physical device is a recent GUI design case by the Beijing Intellectual Property Court ^[12]which was decided based on the overall visual effect of the software and not specifically the physical device in which the software is used.

Item of Manufacture Requirement – ​​Canada

The Canadian Industrial Design Act requires a registrable design to be applied to a “finished article”^[13]. This has caused problems for the protection of digital designs that may not relate to or be displayed on any physical object. It is unclear whether a PHVAR design (such as a hologram or a digital avatar) would be considered a “finished article” under the Act. The Canadian Industrial Design Handbook published by the Canadian Intellectual Property Office (CIPO) adds further uncertainty by requiring that any design application relating to an electronic icon or other virtual object include the words “Display Screen in the name of the article which is the subject of the application.

At this time, there is no indication that CIPO has made any significant progress in clarifying whether industrial design protection for PHVAR designs is available in Canada. Changing CIPO practices to explicitly allow industrial design applications for PHVAR designs would go a long way in supporting Canadian innovators working to make the metaverse a reality (pun intended).