Lee International

It is noted that Hermes International S.A. (hereinafter “Hermes”), a French luxury design house, filed a complaint against digital artist Mason Rothschild with the New York Federal Court claiming that the sale of his NFT MetaBirkins (see below), which are imitations of Hermes’ famous Birkin handbags, in the open market platform constitutes trademark and trade dress infringement.

[Image: MetaBirkin, Source: https://www.thefashionlaw.com]

As in the United States, Korea is anticipating many IP disputes relating to NFTs.  To prepare for these disputes, the Presidential Council on Intellectual Property (“PCIP”), which formulates and implements a plan for national intellectual property in Korea, has started to reform the relevant laws regarding IP protection in the metaverse, such as the use of trademarks on digital items.  Currently, in order to claim trademark infringement in the metaverse, digital items used in the metaverse would need to be acknowledged to be identical or similar to the corresponding items in the real world.  However, there is a limitation under the current laws in preventing trademark infringement in the metaverse in that the classification of items in the real world, e.g., precious metal (Class 14), furniture (Class 20), clothing (Class 25), etc., is different from the classification of the digital images thereof (Class 9).  Accordingly, the PICP is planning to amend not only the Trademark Act in relation to the protection of trademark rights in the metaverse but also the Design Act to broaden the scope of protection to include digital items.

In addition, the Korean Intellectual Property Office (KIPO) is working to improve intellectual property regulations and systems to cope with the digital transformation.  For instance, there have been discussions to improve specific regulations to cope with the increasing number of trademark and design disputes arising from the use of NFTs in the metaverse, and devise a measure to utilize NFTs for IP transactions or apply NFTs to research note containing invention process to prove the uniqueness of the invention history.