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The world of virtual reality can become all too real with trademark infringement

On Behalf of | Apr 4, 2022 | Trademark Infringement |

Traditional trademark law, while complicated, at least has the advantage of actually existing in the real, physical world. When someone uses a distinctive trademarked product in commerce in a way that is likely to mislead a consumer as to the product’s brand, a trademark infringement lawsuit arises.

But how do the concepts of trademark law translate into the world of virtual reality (VR)? If selling a generic shoe with a “Nike swoosh” on it could be considered trademark infringement, what happens when an avatar sells or uses a virtual image of a fake Nike shoe in an open world online video game? This is a strange, new and virtual reality, and the intellectual property implications are fascinating.

A fake but growing world

Virtual reality: The name itself is an oxymoron meaning something like “fake-real” or “real fake.”

However fake it might be, VR is growing in popularity. While more and more people are engaging in online virtual realities, Facebook has been investing up to 20% of its formidable workforce to develop VR and Augmented Reality (AR) environments. No competing company in the 21st century can avoid the IP implications of virtual environments.

Trademark infringement law in the real world

In the real world, a plaintiff in a trademark infringement claim has to establish that:

  • The plaintiff has a mark that is eligible for trademark protection
  • The defendant used (reproduced, imitated, etc.) this mark in connection with a commercial transaction, either direct sale or in advertisement, etc.
  • And that use was likely to deceive, cause confusion or mistake on the part of the consumer

In the real world, these claims are relatively simple, even as the details can create significant room for nuance and argument. In the context of VR, these cases become more complex.

How do trademark infringement principles work in VR?

According to an article in Michigan Tech Law Review (MTLR), a plaintiff could potentially bring a claim against either the actual user who allegedly violated the plaintiff’s trademark rights or against the platform itself.

Bringing a claim against the user is a much simpler case, since the user is the one actually violating the trademark protections. One challenge with this claim is that the VR user defendant might not have deep pockets for it to be worth the costs of bringing a claim.

Another option is a claim against the platform in which the alleged virtual trademark violation occurred.

Claims against platforms

Assuming that the trademark infringement was not committed by the platform but by the user within the virtual environment, a claim against the platform could proceed on the concept of secondary liability. Platforms could incur secondary liability for trademark infringement by its users.

There are issues here of immunity from this type of claim, but this immunity is far from settled law. The MTLR article notes that the relevant legislation governing online IP law specifically exempts trademark claims from the immunity from secondary claims that platforms enjoy.

In the new and rapidly growing world of virtual reality, users, trademark holders and platforms need to be cautious about the potential for trademark infringement claims.

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