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INLEX: ow do you protect your brand in the metaverse

Many companies are launching onto the metaverse which, for lack of proper regulations, looks
like a ruthless world...Nastasia Germain-Tournière, intellectual property lawyer at Inlex Monaco,
gives some key advice on how best to protect a brand from abuse.

and (2) that the defendant has used the same arise) in connection with the metaverse and
or a similar mark in commerce in connection FTs, intellectual property issues are amongst
with the sale or advertising of goods or the largest and most important. Current
services, without their consent. We must regulations provide food for thought and
first remember that trademarks obey the initial responses; nevertheless, it is certain
principle of speciality, that is to say that the that adaptations and additional regulations
protection conferred by a trademark title is are to be expected for better legal certainty.
valid only for the products and services which
are designated at the time of filing and may Are NFT-related contracts contracts like
extend to products and services similar to any other? In the case of sale of NFTs, what
these. Thus, trademarks protected for physical contractual aspects should be considered?
products (clothing, perfumes etc) do not This is the typical case for which the classic
necessarily protect their virtual equivalents, regulations may apply. ust as a collector does
due to their distinct nature. It is, therefore, not hold copyright on a painting he buys, the
necessary to protect them specifically. sale of an FT associated with a tokenised
work does not imply, by default, the transfer of
What legal weapons currently exist to protect the copyright of the artist for the benefit of the
Nastasia Germain-Tournière, trademarks in the metaverse? buyer. It is, therefore, necessary to distinguish
juriste en propriété intellectuelle / intellectual property lawyer Many companies are setting out to conquer between the sale of the FT (considered as
the virtual world and anticipate the a certificate of authenticity) and the sale
It seems that disputes between certain exploitation of their brand in the metaverse or of the copyright associated with the work.
major brands and artists or, in some cases, in the form of FTs, by re-branding activities There is indeed confusion amongst FT
unscrupulous people on the Web3 are with a new wording. In our opinion, it is collectors insofar as the FT is associated
becoming more common? necessary to anticipate as much as possible with the idea of rarity and uniqueness so, by
In registered trademarks we can also cite projects related to the metaverse in order to acquiring an FT, its holder imagines that
several cases involving major brands, such protect brands and these kinds of products they can exploit it as they wish. owever, this
as the MetaBirkin case for example, in which and services as early on as possible. Several is not the case, since the acquirer of an FT
FTs named Baby Birkin and MetaBirkin, classes of products and services may be does not automatically hold the copyright
strongly inspired by the famous erm s involved in a project related to the metaverse associated with the tokenised creation. In
bag, were created and sold by an artist, and, in particular: Class 9, relating to non- the event of a silent contract, the purchaser
without prior authorisation. erm s, therefore, fungible tokens ( FTs); Class 35, relating to is only deemed to be the holder of the token
initiated legal proceedings against the creator online retail services offering downloadable and not of the rights attached to the work.
of these FTs in the ew ork Civil Court, virtual goods; Class 36, relating to the Thus, he or she is not entitled, for example,
in particular for infringement of the Birkin transfer of FT-authenticated downloadable to market the work on derivative objects (or
trademark. According to the artist, erm s’ digital files; and finally Class 41, relating to other media) following the purchase of the
allegations were unfounded since he did not online entertainment and computer games FT. In addition, different types of licence
create or sell fake Birkin bags rather he had intended for use in virtual environments. are used today on the platforms, such as the
made works of art that depicted imaginary evertheless, the drafting of the wording of CC0 licence, the commercial licence or the
Birkin bags covered in fur. Whilst waiting for activities must be done on a case-by-case “no licence”. It therefore seems essential to
the debate to be decided by the court, we may basis by a professional, in order best to cover provide by contract the scope of the transfer
well wonder how luxury brands can protect all activities planned by a company, whilst of copyright associated with tokenised works,
themselves against this type of situation. being precise enough to avoid refusals from according to the buyer’s project: authorisation
the Intellectual Property Office. to modify a tokenised work for example, or
Is the intellectual property of a company in even concerning the simple fact of being able
fact protected by registering a trademark? Do current Monégasque and international to exhibit the tokenised work in the metaverse,
To be successful in a case such as MetaBirkin, regulations apply to the metaverse or is it which remains a prerogative of the creator
the plaintiff must demonstrate that they own a no man’s land? in the absence of a specific provision on
(1) a valid trademark eligible for protection Of the many legal issues that arise (or will this point.

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