Certainly, the term metaverse has been ringing in our ears in recent months. It is also true that few have managed to define it precisely, because it is a concept full of uncertainty that is being built day by day. Let me define it as the virtual platform, in which people, goods, brands, products, among others, will coexist in order to recreate a virtual living space.
As was the beginning of the Internet, surrounded by unanswered questions, users are facing a new platform that offers thousands of possibilities. In order to adapt to the changes, the first step is to understand them, then a strategy must be created to protect economic and personal interests, to finally become a profitable reality. The following are 5 important points in the field of intellectual property to achieve this goal:
Adequate protection of distinctive signs
Currently, distinctive signs are protected on a territorial basis, so we must assume that protection must be granted in the countries where it is considered that the product or service in question will be marketed. An international classification (mostly the latest edition of the Nice Classification) is used to determine in which class the distinctive sign should be protected, according to the goods or services to be marketed.
For the time being, there is no standardized guide or criterion used by the Trademark Offices of all countries to indicate with certainty the class to be used. However, I have elaborated two criteria that can guide the holder of a distinctive sign. The first is to protect the sign in classes related to technology, such as class 9, which protects software, and class 42, which protects technological services and software development.
The second criterion is to protect the signs for the services and products used, emphasizing that they are developed in a “virtual” environment. An example could be a restaurant as follows: restaurant services on virtual platforms. For the time being, McDonald’s has been among the first restaurants to apply for similar protection before the United States Patent and Trademark Office. The purpose of seeking trademark protection is to protect the use of a sign for services and products.
The purpose of seeking trademark protection in the metaverse is to ensure that unauthorized third parties do not use the trademark for their own benefit. The reality is that, in such platform, surely, there will be third parties seeking to take advantage of trademarks, under the argument that once placed on the platform, it belongs to any user. However, once the protection is granted in the territories of interest, some legal or administrative action could be taken (by the platform) to determine the infringement and prevent the illegal use.
On the other hand, its protection also allows the owner of the trademark to deploy it in the metaverse, that is to say, to exploit it economically and present its products or services virtually for users to consume and take advantage of them in order to achieve a position in this new market.
Copyright refers to the attributions that a person enjoys by virtue of being the creator of a work. This is one of the branches that will take more importance in the metaverse, due to its legal connotations and the direct impact it will have on many of the works that exist on the Internet.
A work can take different forms, it can be visual, auditory, literary, art, and so on. Due to the access that all people had to the internet, they were able to connect to millions of platforms that allowed the exhibition of works, which also generated various types of infringements and misappropriations, since they are quite uncertain areas, in which it could be assured that it is difficult to achieve the exercise of a right.
Taking this into account, several platforms have also implemented internal rules that allow the user to prove the ownership of a right, so it could reasonably be expected that the main users in the metaverse offer some administrative mechanism that allows the protection of the legitimate authors of the works.
It is essential to point out that the copyright arises once the work has been created and in its case is embodied in a material support, i.e. it does not need a formal registration to be recognized. In spite of this, it is advisable to initiate a protection process before the Intellectual Property Registry or the entity in charge in the territory of interest, so that there is a document that proves the ownership in question and can be exercised in the event of any conflict in the metaverse.
However, there are new mechanisms that could further facilitate copyright protection, as can be understood in the following aspect to be taken into account.
The impact of the NFTs on Intellectual Property
The concept of metaverse being sufficient as something new and complex to process, another closely related concept appears, which may also involve a degree of difficulty for the user. In order to make it as clear as possible, we could understand Non Fungible Tokens (NFT) as a type of label that accompanies certain creations placed on the Internet, which allow to grant an attribution of “ownership” or “authenticity” to that piece. This does not mean that there are no more identical pieces, on the contrary, what it means is that one of those identical pieces belongs to whoever has that NFT or that the piece in question is authentic.
The concept of “art” that can be susceptible to protection through an NFT, presents a new way of understanding the cybernetic era, since it is not only a portrait or a painting of a famous author, on the contrary, it can be memes, videos, GIFs, and any other form of recreating material on the Internet, which is interesting for those who will acquire it through an NFT. Due to the volatility of the product that is being protected, there is no parameter or price range, rather, it will depend on the reception of the market that day at that moment. This also implies a risk for those who have the interest to sell such work to a third party, since they will not know with certainty at what cost they will be able to exercise such act.
Undoubtedly, CLTs bring with them a series of challenges for users. Now, from an Intellectual Property perspective, it is important to know the implications and affectations it represents.
In the first place, the NFTs are alien to indicate who is the author of the work, since they abstain to be only labels, which can be compared with acquiring a piece of clothing of a famous brand, although it is true, the brand produces more than one identical piece, as a buyer of a piece you will have the property of that specific good, but you do not enjoy any type of Intellectual Property right.
It is presumed that the NFT will have an important role in the metaverse, since they will function as a guarantee of ownership and exchange. Therefore, as the author of a work, it is necessary to keep in mind the protection indexes and faculties that can be exercised.
In the first place, there is a way in which the NFT are favorable to the author and it is that, there is the possibility of adding royalties, once a copy of the piece is acquired and with each transaction that is generated subsequently. With this, the author can enjoy the benefits of the reproduction of his art.
Secondly, authors must prohibit third parties, even if they have an NFT on a reproduction of the work, not to exploit it economically, i.e. third parties are not allowed to profit from the work itself, since they do not have any Intellectual Property right. Therefore, it is recommended to have a more rigid control to detect these infringements.
That said, it could be determined that, although the NFT have already played an important role in this new era, it is necessary for authors to understand the scope of their powers as authors and the rights they can exercise against third parties.
The importance of patents, industrial designs and utility models
Many users have wondered how they will be able to access the metaverse, for the moment there is already the possibility of accessing a virtual reality, by means of various accessories on the market, which is an indicator that certain objects will be necessary to participate in the aforementioned platform.
For all those who are interested in developing a product related to virtual reality and even with everything that is directly related to a modality of access to the metaverse, they should consider filing an application for protection before the Intellectual Property Registry or the corresponding authority in the country of their interest, in order to initiate a protection that guarantees the possibility to exclusively exploit their invention, either as a patent of invention, utility model or industrial design.
On the other hand, the owners of these inventions should know that the Industrial Property Law, Decree 57-2000, allows contractual licenses of use, according to article 132 which states “The owner of a patent may grant a license for the exploitation of the patented invention. The registration of the contractual license in the Registry is not obligatory, but it will only have legal effects against third parties from the moment of registration”. In other words, the owner of a patent is allowed to authorize a third party to use his invention, generally in exchange for an economic benefit.
This benefit can only be enjoyed if the invention has been recognized as an invention, so it is advisable that all inventors initiate the corresponding protection with the aim of obtaining a benefit for the creations of their intellect.
Proactivity as a decisive factor in the metaverse
Taking into account all of the above, the most relevant factor is the proactivity that authors and trademark and patent holders must have. Also, all those who want to dive into the metaverse must be proactive. They will have to study meticulously how their company works, since there are still countless elements to protect, among which are: confidential information, business secrets or domain names.
It is clear that the metaverse is a reality that is here to stay, and it is also clear that it will be a concept that will continue to be formed with the participation of all users, and in view of this, we will have to continue adapting to the changes and be prepared for the new challenges.
In conclusion, Intellectual Property will play a decisive role in the development of the metaverse, so anyone who has any interest in having a direct or indirect participation, must protect their trademarks, trade names, advertising signs, works, patents, and a series of other elements, depending on the market in which they operate in order to take advantage of this new opportunity for growth.
Industrial Property Law, Decree 57-2000 of the Congress of the Republic of Guatemala.
Ley de Derecho de Autor y Derechos Conexos, Decree 33-98 of the Congress of the Republic of Guatemala.
Barnea Jaffa, Will NFTs Push Regulators to Regulate the Metaverse? Available at: https://www.jdsupra.com/legalnews/will-nfts-push-regulators-to-regulate-5368051/.
Kohrman Jackson & Krantz LLP, Intellectual Property in the Metaverse. Available at: https://www.jdsupra.com/legalnews/intellectual-property-in-the-metaverse-1793763/.
ArentFox Schiff, Protecting and Enforcing IP Rights in the Metaverse. Available at: https://www.jdsupra.com/legalnews/protecting-and-enforcing-ip-rights-in-6271723/
Riquelme Rodrigo, What is the Metaverse? November 7, 2021.
Palomo Ricardo, A Parallel Society, December 28, 2021.
Rios Ailyn, Protect your brand in the digital environment of the metaverse, December 15, 2021.
Feliu Franch Joan, Are NFTs sold as art, 31 March 2022.
Bissada, M. Available at: https://www.forbes.com/sites/masonbissada/2022/02/09/mcdonalds-files-trademark-for-metaverse-based-virtual-restaurant/?sh=26cff6f66678
 Bissada, M. Forbes. Available at: https://www.forbes.com/sites/masonbissada/2022/02/09/mcdonalds-files-trademark-for-metaverse-based-virtual-restaurant/?sh=26cff6f66678