Metaverse and Design Law (Ayaka MORI)
At first
My name is Ayaka Mori, a second-year master's student at the Graduate School of Law. Thank you very much. In recent years, due to the advancement of technology such as VR and the social situation that requires remote interaction with people, the metaverse has become an increasing topic, and RCLIP has also held a symposium on the theme of "The current state of technology and creation of virtual space and intellectual property law"[1]As an event for the briefing session of the university's IP LLM course, Professor Tatsuhiro Ueno gave a mock lecture titled "Metaverse and Copyright: Japan as a 'Metaverse Paradise'?" [2].
Until now, I have had the opportunity to listen to talks on this theme at study groups and lectures, and to research and read related papers, but I feel that the prevailing view is that it is difficult to utilize the design law in the metaverse with regard to the theme of "Metaverse and Design Law".
Therefore, in this column, I would like to touch on three points regarding "Design Law and the Metaverse": (1) why it is difficult to use the Design Law in the metaverse in Japan in the first place, (2) whether there is no prospect of utilizing the Design Law at all, and (3) introduction of European systems.
(1) Articles, precedents, and general theories of the Metaverse and the Design Law
There are various design protection issues that arise in relation to the metaverse, but among them, for example, a real luxury brand watch that is scanned and elaborately reproduced on the metaverse is sold as an item at a store on the metaverse without the permission of the design owner, that is, a real-world object (as will be described later, a "article" under the Design Law) We will consider only cases of infringement related to objects on the metaverse created based on the following. (In addition to this, please note that there are various other patterns that can be considered by multiplying the type of design and infringement / registration, such as infringement cases such as reproducing the design of an architectural design in the real world with a function to create a world on the metaverse, etc., and a registration case such as attempting to register the interior design of a store in the metaverse in reality.) ）
In the following, the case of infringement related to an object on the metaverse created based on the above real-world object is used by others in the virtual space without permission by others in the case of infringement related to the →object on the metaverse created based on the above-mentioned real world object. Type 2 (V→Real): The design of an object that exists only in virtual space is used by others in real space without permission. Type 3 (R→V): A design related to an article that exists in the real world is used by others in a virtual space without permission. Let's simply summarize the above three categories for the time being, and apply the current articles of the Design Law, judicial precedents, and popular interpretations to these three types.
Virtual Objects and Property/Image Applicability
First of all, in order for a design to be protected by the Design Law, the design must be a "design" as defined in Article 2, Paragraph 1 of the Design Law, that is, the shape, pattern or color of an article or a combination thereof (= shape, etc.), an image (operation image, display image), or a building, and it must evoke a sense of beauty through vision.
In addition, since Article 23 stipulates that "the owner of the design right shall have the exclusive right to carry out the registered design and similar designs as a business," in order for the design right holder to exercise its rights against the unauthorized user of the registered design, firstly, the design carried out by the unauthorized user of the registered design must fall under the category of "design" (as described above) as defined in Article 2, Paragraph 1, and secondly, The unauthorized user of the registered design must have "implemented" as defined in Article 2, Paragraph 2, that is, manufactured, created, etc., the "goods" and "images" related to the design.
Furthermore, the definition of "goods" is interpreted as "movable property that is a tangible thing" and does not include intangible things [3].
Objects in virtual spaces such as the metaverse cannot be called "goods" because they are intangible. The question left is whether or not it falls under the category of image design, but according to the definition of Article 2, Paragraph 1, the design of an image is limited to something that is used for the operation of the device or that is displayed as a result of the device performing its function. (Under the Design Act, unlike the Copyright Act, even if a design is created without relying on another person's registered design, if it is similar to the registered design, it may be subject to the exercise of rights.) Therefore, if the content itself is subject to the protection of the Design Law, there is a problem that creative activities will be hindered by having to confirm the registered design one by one when creating, and the protection by the Design Law is said to be such a limitation so that it does not protect the content itself[4]。 In many cases, objects that are not involved in the operation or display of equipment, such as chairs for sitting avatars in a store in a mere virtual space, or designs of intangible food that are traded as products there, do not fall under the category of "images".
From the above, in [Type 1 (V→V) and Type 2 (V→R)], the design pertaining to an object in virtual space does not fall under the category of design in the first place, and the unauthorized use of the design right cannot be an infringement of the design right, and in the [Type 3 (R→V)], the unauthorized use of a registered design in the virtual is an act that cannot be said to be the "implementation" of the "design" and is outside the scope of the right and does not infringe. It is likely that there will be more cases.
品の越境と物品の類似性
Even if an object in virtual space is somehow considered to be an article or image, there are still hurdles to exercising the right to use the design without permission under Type 2 (V→R) and Type 3 (R→V).
Article 23, which stipulates the validity of design rights, states that the design right extends to the implementation of "registered designs and similar designs," so it is required that the registered design and the design used without permission be "similar". In this regard, the Supreme Court precedent in the flexible telescopic hose case[5] states in its judgment that "the effect of a design right extends to designs that are similar to a registered design, that is, designs that are identical to or similar to the articles covered by the registered design, and that produce an aesthetic sensation similar to the registered design to the general public (Article 23 of the Act)" (Article 23 of the Act). Emphasis is given to the cited author), indicating the understanding that the similarity of the articles is a requirement for the similarity of the design[6]。 In addition, in the design examination standards, it is stated that "since the purpose and shape of the design are inseparable, the similarity of the design does not occur unless the articles related to the design of the two contrasting designs are the same or similar."https://rclip.jp/2022/09/01/202209column/
Considering this point about the metaverse, in the second type (V→R) and the third type (R→V), between the registered design and the design by unauthorized use, if it is considered an intangible object, the border between the real and virtual goods will be crossed, and if the virtual design falls under the category of "image", "article" and "image" As a result, it seems likely that similarity in goods will not be recognized and similarity in design will be denied.
(2) Is there any prospect of utilizing the Design Law?
As we have seen above, it seems that it is currently extremely difficult to utilize the Design Law in the metaverse, especially with regard to designs that deviate from image design, based on articles, judicial precedents, and conventional interpretations. On the other hand, if the above understanding is taken from the inside out, (1) an object in virtual space that is an intangible object (for things that do not fall under "image") is interpreted as being included in "article" under the Design Law, and the applicability of "design" is cleared, and in addition to this, (2) it is interpreted that the "article" or "image" that is an object in such virtual space is similar to the "article" or "image" in real life, or In the first place, if it is interpreted in such a way as not to strictly require similarity of goods as a requirement for determining the similarity of designs, it will be possible to protect the design of objects in virtual space and to capture acts of unauthorized use that cross the boundary between real and virtual without departing from the wording of the current law.
In this regard, with regard to (1), although the interpretation of the concept of "thing" in the Civil Code is that "goods" are tangible objects (Article 85 of the Civil Code), it is pointed out that "there is no particular reason to be concerned with the concept of civil law" in the Design Law, and that the interpretation of goods is "(1) an object that has a function and (2) is in principle a movable property that is used for trade, but there is room to include intangible objects other than images." It has been pointed out that it should be[8], "From the Design Ordinance of Meiji 21 to the Taisho 10 Law, 'article' and 'design' are separate concepts", "'Article' became a component of 'design' from the current law", "There is no necessity that 'article' must be a component of 'design' in the Design Law", and " I agree with the emphasis on the relationship between form and function in the examination, but there is no necessity to consider "form" = "form of physical goods"."[9]In the context of discussing 3D scanners, 3D printers, and 3D data, "As the use of 3D data in areas such as 3D scanners, 3D printers, augmented reality, and virtual reality is expected to advance in the future, it will be a subject of discussion whether the regulations under the Design Law should be limited to cases involving tangible objects (based on the excise nature of the design)." Issues have also been raised as [10].
With regard to (2), after analyzing the trends in practice regarding the similarity of goods, pointing out that the similarity of goods is not a requirement under the text but a requirement for interpretation, we organize multiple grounds for the interpretation of the similarity of goods, and finally consider that "if any of the grounds is admissible, it will be understood as necessary as a requirement." Both of these reasons can be critically examined, and it may be argued (regardless of the practical implications) that similarity of articles is not at least a requirement for similarity of design under current law."[11]
From the above, it can be said that it is not completely impossible to make the use of design law in the metaverse possible by interpretive theory. In addition, as a legislative theory, it is possible that protection will be strengthened by adopting the above interpretation and clarifying it, or expanding the definition of "image"[12].
(3) Provisions of European Design Law that may be related to the issue of the metaverse
Let's take a moment to look at the European system. In Europe, "product" (a concept similar to Japan's goods, and "product" in English) is understood to include intangible matter. Especially in Germany, it is said that intangible objects are loaded into products as a design of "screen display and icons[13]"[14].
In addition, since it is clearly stated that the scope of protection of the design is not restricted by the product described at the time of application (Article 36, Paragraph 6 of the European Design Regulations[15]), it can be said that similarity of the product is not required for similarity of the design[16]. In fact, a 1995 German Supreme Court precedent[17] recognizes the similarity between passenger car designs and toy car designs beyond the restrictions of the article category [18].
In addition, the protection of design rights extends to the "act of reproduction" (according to the contrary interpretation of Article 20(1)(c) of the European Design Regulation[20]) within the scope of "not giving a different overall impression to the user who is familiar with the situation" (Article 10(1)[19]). Using these provisions, for example, in Germany, in the case of publishing a train registered in a pamphlet[21], in France, in the case of holding a miniature of the umbrella in a mannequin and using it for advertising visuals[22], respectively, "act of reproduction" Infringement of design rights is recognized.
The result is as if the reproduction of abstract designs away from the object is regulated, and it can be said that the decisive difference between the European Design Law and the Japan Design Law appears. In view of the fact that there are provisions for the restriction of design rights that are similar in content to the provisions for restricting copyrights, it seems that the design law in Europe is somewhat closer to copyright law than the law of Japan.
In the case of the metaverse, it is not impossible to uniformly protect an object in the virtual space just because it is an intangible object as in the Japan law, and it is possible to capture unauthorized use of goods across borders in [Type 2 (V→R) and Type 3 (R→V)], so it can be said that the Design Law is in a situation where it is easier to apply to problems in the metaverse than in Japan.
Conclusion
There are various options for approaching the "metaverse and design law", whether it is interpretive theory or legislative theory[23], but each has its own problems.
For example, as a theory of interpretation, if we simply interpret it broadly as including intangible objects in articles, it will avoid a situation where the design of an object in virtual space cannot be registered at all unless it corresponds to an image design in [Type 1 (V→→V) and Type 2 (→VR)] ( Except in cases where a design by a person who used a registered design without permission falls under the design of the image[24]), the problem of not being able to exercise the right because it does not fall under the "implementation" of the "design" is avoided, but the intangible design is widely protected, and concerns about "content protection" in the image design mentioned above, and concerns about the division of copyright law and design law It will arise. In addition, in the case of the same interpretation, it is also questionable whether it is okay to lump all designs related to intangible objects into a single category such as graphic design in the design classification (as Germany has grouped together as "screen display and icon").
In addition, if we take an interpretation that similarity of design does not require similarity of goods as a requirement, even if we want to be able to exercise rights even if there is a cross-border between real goods and virtual goods, for example, the exercise of rights has been denied in the past, such as the case of unauthorized use of a registered design of a car as a design for a toy miniature car. It is conceivable that the question arises as to whether the influence of the interpretation extends even when there is a border crossing from one real item to another real article.
Even if we refer to the European way of thinking as a legislative theory, the European-style system is contrary to the current operation of Japan, and it will cause confusion in practice, and it will not be permissible to simply import the system in the first place, ignoring fundamental differences in the protection target, legal purpose, and culture of the Design Law.
In addition, in order to make it easier to imagine the story, we have limited the discussion to infringement cases related to objects on the metaverse created based on real-world objects, but it is necessary to consider a wide range of cases, including cases where other types of designs are involved, such as architectural designs, interior designs, and designs that are registered as image designs in real life, and situations of registration. In addition, it is necessary to consider the relationship between copyright and applied art, the balance between it and other laws such as the Unfair Competition Prevention Act and the Trademark Act, as well as the issue of international jurisdiction and governing law. Furthermore, even if various options can be adopted for the future of the Japan Design Law, if one option is to be adopted, it is necessary to give a positive reason.
"Metaverse and Design Law" is a hot theme right now[25], and at the same time, it is a very interesting theme as it forces us to reconsider the traditional concepts of design law such as "goods" and "implementation" from a new angle. Although this column is titled "Metaverse and Design Law," it does not touch on actual metaverse cases, and it is limited to basic and preparatory topics, but I would like to continue my research while paying attention to domestic and international trends in the future.
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[1] https://rclip.jp/2022/03/24/20220423seminar/ (last date of viewing on August 24, 2022).
[2] https://www.waseda.jp/folaw/glaw/6777/ (last date of viewing August 24, 2022).
[3] Sagae et al., eds., Design Law Commentary [New Edition], Keiso Shobo, 2022 [Gomi Asuka], p. 27
[4] "Legal Consultation on Design and Design I" (Seirin Shoin, 2021), p. 210 [Asuka Gomi], states that "The reason behind this limited scope of protection is that granting protection for content, etc., intersects with copyright protection." "It is important to note that, although content and decorative images are not protected on their own, it is difficult to simply exclude them from the constituent elements of a design."
[5] Showa 49, 3, 19 Minji 28 No. 2, p. 308 [Flexible Stretch Incident].
[6] Daiya Aoki, "On the Similarity of Goods in Design Law," Jurist No. 7 (2013), pp. 166-167
[7] Criteria for the Examination of Craftsmen Part III Chapter 2 Section 1 2.2.2 (last date of review 29 April 2022).https://www.jpo.go.jp/system/laws/rule/guideline/design/shinsa_kijun/document/index/isho-shinsakijun-03-02-01.pdf
[8] Hanhejiang (3) [Gomi Asuka], pp. 29-33
[9] Yuio Mine, "'Design' and 'Design Law': An Opportunity to Consider 'Design Law' that Contributes to 'Design Management'" (Special Issue: Design) Patent Vol. 71, No. 12 (2018), pp. 5-14
[10] Daiya Aoki, "Design Law and Intangible Use of Design, Design of Intangible Objects – Comparison with Copyright Law," Jurist No. 1511 (2017), pp. 76-81
[11] For more details, see Daiya Aoki, "On the Similarity of Goods in Design Law," Jurist No. 7 (2013), pp. 166-172.
[12] In the context of the protection of design rights for NFT images, as an opposition to the addition of a new registrable type of image in relation to the design issue in the metaverse, see Yoshiyuki Tamura, "Opinions on 'Issues to be Considered in the Intellectual Property System'," Documents submitted by members of the JPO Policy Promotion Advisory Committee and presentation materials from experts, p. 4. (Last viewed August 24, 2022)https://www.jpo.go.jp/resources/shingikai/kenkyukai/kondankai/document/index/02.pdf
[13] Equivalent to Article 3(b) "Graphic symbols" under the European Design Regulations.
[14] Masahiro Motoyama, "Trends in Design Protection in Europe and Germany and Implications for Japan's Design Law: On the Position of 'Goods'," Intellectual Property Management Vol. 69, No. 4 (2019), p. 585
[15] Council Regulation No. 6/2002 of 12 December 2001 on Community Designs, as amended by L112/2012 of 24 April 2012. https://www.jpo.go.jp/system/laws/gaikoku/document/mokuji/ec6_02j.pdf）
Article 36 The Applicant shall comply with the Requirements
(1), (3) to (5)
(2) In addition, the application documents must include an indication of the product to which the design is to be incorporated or to be applied
(6) The information contained in the components described in subparagraphs (2) and (3) (a) and (d) shall not affect the scope of protection with respect to the design itself.
[16] Motoyama, supra note (14), p. 586.
[17] Federal Court of Justice, judgment of 19.5.2010, GRUR 1996, 57.
[18] Motoyama, supra note (14), p. 586.
[19] Article 10 Scope of protection
(1) The scope of protection conferred by a communal design shall include a design that does not give a different overall impression to the well-versed user.
(2) When assessing the scope of protection, consideration shall be given to the degree of freedom of the design creator in creating the design.
[20] Article 20 Restrictions on rights granted by community designs
(1) The rights conferred by a community design may not be exercised in the following acts:
(a) Acts carried out for private, non-commercial purposes;
(b) Acts carried out for experimental purposes;
(c) Acts of quotation or reproduction for the purpose of teaching. provided, however, that the conduct is consistent with fair trade practices, does not unduly impair the ordinary use of the design, and that reference is made to the source of the design.
(2) Abbreviation
[21] Federal Court of Justice, judgment of 7.4.2011 – I ZR 56/09 – ICE
[22] Paris Court of Appeal, Pole 5, Chamber 2, November 27, 2015 – n°13/21612
[23] Since the amount of text is quite large for a column, I will omit the possible options of the Japan design method and the discussion of them here, and write it again in my master's thesis.
Currently, the following materials refer to the options that the Japan Design Law can take with regard to this issue.
NTT DATA Institute of Management Research Co., Ltd. "Fact-finding Survey on New Intellectual Property System Issues such as Design and Brand Protection Overseas Survey Report," February 4, Reiwa (last viewed August 24, 2022)https://www.meti.go.jp/policy/economy/chizai/chiteki/pdf/reiwa3_itaku_designbrand.pdf
Daiya Aoki "Protection of Design Rights of NFT Image Data" JPO Policy Promotion Roundtable Presentation materials submitted by members and presentation materials from experts (last viewed on August 24, 2022)https://www.jpo.go.jp/resources/shingikai/kenkyukai/kondankai/document/index/05.pdf
[24] Here, even in the third category (R→V), the case where a design by a person who used a registered design without permission was excluded was excluded because, first, the wording "design" is recognized, in the case of an image design, the applicability of "design" is recognized regardless of the quality of the goods, and secondly, the wording "implementation" is recognized. This is because in the case of an image design, the question is whether or not it falls under the creation of an image under Article 2, Paragraph 2, Item 3, and the applicability of the design is not an issue.
[25] Yomiuri Shimbun Online, "What to do about avatar portrait rights?... "Metaverse" legal issues, government to discuss at study group" (last viewed August 24, 2022), https://www.yomiuri.co.jp/politics/20220823-OYT1T50147/amp/
〈 Ayaka Mori (RC)〉