Major brands from
Nike is suing online marketplace StockX for launching NFTs based on Nike shoes. In January, Hermès sued artist Mason Rothschild who created “MetaBirkin” NFTs, in part for trademark and trade dress infringement and dilution.
“It’s all part of a really interesting trend where we’re seeing a lot of big brands recently file trademark applications for virtual goods, NFTs and virtual services for physical goods,” said Rachael Dickson, a trademark attorney who provides consulting for Heirlume, a trademark legaltech startup company.
It’s hard to tell the intention of these companies as almost all of the applications are filed as intent to use applications and don’t provide specifics about how the goods and services will be used, Dickson said. But the potential for such brands to expand into the metaverse in the near future is extremely likely, even if the details now are vague, she said.
“Some of them it’s pretty easy to predict. With clothes, there just was a big Metaverse fashion week on Decentraland last week, and we saw how Forever 21 launched in that space, as did some cosmetics companies,” Dickson said. “But it’s a little interesting with some of these more non-fashion brands like Band-Aid.”
Miller Lite, or Meta Lite as it is known on the 3-D virtual world browser-based platform Decentraland, recently proved this by opening a virtual bar in the metaverse.
“It was funny because they check your ID at the door and I couldn’t get in because I hadn’t uploaded my ID to Decentraland yet. So there are already brands launching in the metaverse,” Dickson said.
Attorney Sara Hawkins, who counsels digital-focused companies, said trademark filings such as Band-Aid’s might seem odd, but make sense when thought of in a broader global context.
“It’s not uncommon for a company to run into problems in other countries, especially countries that may not have as developed trademark systems or their systems don’t recognize prior U.S. trademarks,” Hawkins said. “With the metaverse not really having a centralized government, we don’t really know what the law is going to be there.”
“That’s the $64,00 question,” Stuart Irvin, an intellectual property lawyer at Covington & Burling LLP, said. “The way everybody thinks about this is by analogy to the Internet. The United States set most of the rules for how the internet would work. Outside the United States, if it’s a Chinese company then Chinese rules apply because it’s their products and services. There’s no international law of the internet.”
Irvin said that it remains unclear whether the metaverse will follow a similar route or if there will be an entirely new metaverse legal system.
“My word of caution to everybody is just because the internet evolved to default to local state law doesn’t mean that the metaverse is going to happen that way. We can’t assume from our experience with the internet that the metaverse is going to have a similar legal regime attached to it,” Irvin said.
It’s also unclear how Band-Aid’s potential venture into the virtual world will play out, Dickson said. Johnson & Johnson didn’t immediately respond to a request for comment.
“I don’t know how somebody would get injured in the metaverse, but people do create worlds and play games that are very violent. You could put a Band-Aid on something if you lose your hand or something, that’s the part I don’t know,” she said. “But from a branding perspective and a legal perspective, I think it’s a matter of being proactive and not knowing what the laws are going to be.”