Rethinking trademark law doctrines in the virtual environment

Thesis

The commercialisation of digital content has prospered in the past few years, with the concept of non-fungible tokens (NFTs) coming up and capturing the attention of everyone. However, the interplay between physical and digital goods introduces complexities and challenges in determining the scope of trademark protection. The emergence of the concept of the virtual environment, or ‘metaverse’, which is thought to be a medium for trademark infringement, further complicates this situation. Against this background, this article concentrates on whether the trademark framework applicable in the real world can be transposed to the NFTs and virtual goods in virtual spaces (VGIVS).

The thesis analyses this issue by first discussing the establishment of NFT-related trademark rights, i.e., the registration and use of trademarks. The article identifies the risk of an unduly broad monopoly and suggests issuing further guidelines to fill the gap. It also points out the current ambiguity and best practice on the demonstration of trademark use.

It also focuses on trademark infringement in virtual environments. Through the analysis of the landmark case of Hermès Int’l v Rothschild (the MetaBirkins case), this thesis captures the hybrid nature of VGIVS, which can usually be both expressive and commercial. The expressiveness in the VGIVS is protectable and the Rogers test can be applied to different types of VGIVS. To better reflect the characteristics of the virtual space and VGIVS, it proposes a refined ‘reasonable expressiveness’ threshold test specifically in the context of virtual environments, considering the content of use, the context of use and the type of product to determine if a work in the virtual environment is protectable under the Rogers test. Additionally, it clarifies the Jack Daniel’s impact on the free creation in the virtual space and reconsiders the likelihood of confusion in light of virtual spaces.

Authors: Zhao, Y

• DOI: 10.5287/ora-daozmyqqe
• Type of award: MPhil
• Level of award: Masters
• Awarding institution: University of Oxford
• Language: English
• Subjects: Trademark Law