Status Quo
On 18 November 2024 the new EU Design regime was published in the Official Journal as Regulation (EU) 2024/2822 and Directive (EU) 2024/2823, meaning the new regime will enter into force on 10 December 2024.
Regulation (EU) 2024/2822 will be applicable from 1 May 2025 and member states of the EU have until December 2027 to make necessary changes to national law to implement the Directive. However, what are these changes? And how do they account for 21st century?
Under the old regime (Regulation (EC) No 6/2002) an EU Design can be obtained for:
“the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”; Article 3(a).
And a “product” is defined as:
“any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”; Article 3(b).
Notably, EU designs (save for graphical symbols and typographical typefaces) in the original regulation were directed toward physical objects that one can feel and touch. Under this regime, while redress can be obtained for the sale of, for example, counterfeit Louis Vuitton handbags, their representation on a virtual reality video game without permission is, for want of a better phrase, fair game – unless a trademark is also being infringed of course!
The current regime thus means the world of video games, and the metaverse in general, is at risk of becoming like the wild-west, with proprietors of design rights having little control over how their designs are used in the digital world.
Welcome to the 21st Century
As of 10 December 2024, a welcome change to EU design law will come into force that will help to address this issue. Under the new regulation (Regulation (EU) 2024/2822) an EU Design can be obtained for:
“the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features”; Article 3(1).
And a “product” will be defined as:
“any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form […]”; Article 3(2).
meaning digital designs, either static or animated, will be protectable under EU law – it looks like the Sheriff may be coming to town in the wild-west of the metaverse!
Infringing in the Metaverse
Once the changes are implemented, EU design proprietors will be able to take action against anyone who infringes their registered designs irrespective of whether the design is infringed by a physical product that you can touch, or by a static or animated virtual representation in the metaverse.
For example, once implemented, someone will infringe a registered design if they are “making, offering, placing on the market or using a product in which the design is incorporated or to which the design is applied” (Article 19 2(a)) regardless of whether that product is in a physical or a virtual form. In other words, digital products (e.g., a digital representation of a Louis Vuitton handbag, a Jaguar car, etc.) that can be made, sold, and/or bought in a virtual reality environment may be considered infringing articles.
This does give rise to several questions about, for example: who may be considered an infringer? What does and does not constitute an infringing act? Where geographically an alleged infringement may be considered to have occurred?
For example, if an end user of a virtual reality racing game is given the capability to design their own car and sell that car for virtual or real currency to other users around the world, could the provider of the virtual reality platform itself be considered to be infringers if the car designed by the end user incorporates a registered design of e.g., a vehicle manufacturer?
Does every instantiation of the virtual vehicle on the respective screen of a different end user – or only the storage of the representation on the server – constitute the ‘making’ of an infringing product within the meaning of the amended regulation? Similarly, even if the virtual vehicle is being displayed on the screen of an end user in a country covered by the regulation, if the server is in a country that is not covered does that still represent an infringement?
Infringing by floppy disc, USB stick, and email…
As well as maintaining the infringing acts that already exist in EU design law, in another nod toward the development of 21st century tech, the new regulation will also introduce the infringing act of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product…to be made”; Article 19 2(d).
This change has been introduced to protect against the creation of infringing articles by technologies such as 3D printing by discouraging, for example, the distribution of CAD files that record a design and which can be used to manufacture an infringing product by e.g., a 3D printer.
Whilst this appears to be directed primarily at the manufacture of physical products, it does raise some interesting questions in the context of the other changes to the regulations mentioned above.
Take the example of the virtual car given above. Even though the provider of the virtual reality platform may have no direct knowledge of the creation of the infringing car design by an individual user, the platform will naturally store that design and distribute it to the screens of other users. Would this mean that the platform provider was guilty of the new infringing act of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product…to be made”?
As it stands the new regulation is not 100 % clear on this issue and needs interpretation – ultimately the courts will have to decide in test cases.
But what about the UK?
Since Brexit, Community (EU) Designs no longer apply to the UK, and EU regulations and directives will have no effect on design law in the UK. As such, design protection in UK and the EU are about to diverge … and not in a good way. As things stand, in the UK design protection will not be available for digital designs, and products created in virtual video games sold in the UK will not be infringing products!
With respect to virtual reality worlds, the divergence between the UK and the EU will create quite complex and nuanced issues. For example, if the virtual reality world is maintained by a UK company on a server in the UK and provided to end users in the EU, will a proprietor be able to enforce an EU registered design against the UK company? Possibly not…
The UK Government will therefore need to decide whether they wish to harmonise UK design law with the new EU design regime to bring the UK into the 21st century, and avoid the UK becoming a haven for possible infringers of EU designs in the digital world by becoming the new home of servers hosting digital platforms (presuming the servers hosting digital platforms are deemed not to infringe if they are outside the jurisdiction of the EU).
Contact Us
Looking for design protection in the metaverse? Contact us to discuss.
Jeremy Smith – Partner | [email protected]
Christopher Ashcroft – Associate | [email protected]
