Virtual reality is set to emerge as a new trademark battleground, brand owners are warned 12 May 16
If this year’s technology predictions hold true, 2016 will be the year that virtual reality (VR) will begin to breakthrough into the mainstream. As products from the likes of Google, Facebook, Microsoft, Sony, HTC and Samsung add much needed competition to a new generation of VR devices, one IP expert tells World Trademark Review that VR platforms and VR-related domains should now be on the policing schedule for most brand owners.
Virtual reality has taken a significant step forward in recent years thanks to the development of technology – such as the Oculus Rift (which was purchased by Facebook in 2014) and the HTC Vive. In basic terms, users are able to wear a headset and use apps or games in a fully immersive, 360 degree interface. Some VR devices – such as Google’s Cardboard headset – simply allow a user to place their smartphone into a more basic headset which leads to a similar, although somewhat diluted, VR experience. In the next couple of years, devices such as the Sony Playstation VR, Oculus Rift, HTC Vive, Samsung Gear VR, Microsoft HoloLens will be on the market; Deloitte predicts that around 2.5 million VR headsets and 10 million VR apps will be sold this year alone.
In fact, app stores for some of the VR platforms have already launched. The Oculus Rift and HTC Vive both have a dedicated marketplace for VR applications and Apple’s iOS, Google’s Android and Windows all have dedicated sections for VR apps. As all these marketplaces are relatively new, brand owners should start forming enforcement strategies now, advises Jonathan Purow, who has written on this subject. “I believe that we are about to reach a tipping point in the popularity of VR, and so now is the best time for trademark counsel to familiarise themselves with VR platforms and how to enforce trademark rights on them,” the Gottlieb, Rackman & Reisman associate states.
One current option for trademark counsel to look at apps available for a variety of VR devices is the independent VR marketplace, WeAreVR. This marketplace has hundreds of apps and games to download on a platform similar to Google Play, and has a well-developed search function and community. Some of the apps available include VR experiences taken from popular entertainment titles such as Games Of Thrones, Harry Potter, Minecraft, Super Mario, Legend Of Zelda and Final Fantasy. However, these apps are available at no cost, and this could prove to be a dilemma for mark owners.
“If a US trademark owner is trying to assert infringement or other trademark related claims, the infringer has to be using the trademark in commerce,” says Purow, “If the infringer has merely posted a VR experience with, for example, the title HARRY POTTER and receives no commercial benefit from it, the trademark owner could not really make a claim under US law.” This requirement of a use in commerce in order to assert trademark infringement and related claims against VR activities could result in some novel and difficult situations, Purow continues: “I would not be surprised if there ended up being a gigantic litigation between a tech company providing a VR platform (eg, Facebook) and a major content creator (eg, HBO) over alleged trademark infringement on the VR platform that would hinge on whether or not there was ‘use in commerce’ of the allegedly infringing trademark.”
The policing of these new VR platforms is one consideration for trademark counsel in certain sectors, but another is on the registration of VR-related domain names. World Trademark Review conducted research on registered VR domains that relate to the top movie and gaming franchises of all-time (in terms of total revenue). It revealed that a large majority are already held by private entities seemingly not related to the legitimate rights holder. You can view a table of the results below:
This demonstrates the need for brand owners who may one day consider using virtual reality technology – for educational, entertainment, gaming, promotional or advertising purposes – to ensure they secure their primary domains now. Even non-entertainment brands are being targeted – for example, AppleVR.com, FacebookVR.com, FordVR.com and ToyotaVR.com are all registered by what appear to be non-related entities.
More challenges will no doubt come up as the VR platforms evolve – Purow mentions that clothing brands will need to be more vigilant of infringing clothing in virtual worlds. But virtual reality app platforms and VR-related domains are two areas where trademark practitioners can take pro-active steps today to ensure that they are all set for the mainstream breakthrough of VR devices in the future.
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