The United States Patent and Trademark Office (USPTO) has recently completed a process of gathering public comments on a potential rule change to allow design patents to encompass novel “objects” rendered within new technologies, including holograms, projections, augmented reality (AR) and virtual reality (VR). This could help further protect and monetize the ever-growing virtual world. These technologies are related but distinct. Each involves a non-physical rendering of three-dimensional imagery. AR utilizes a real-world setting, while VR is completely virtual. The broad cultural interest in the Pokemon Go mobile game mainly centered around its AR technology, allowing users to physically walk around in the real world while their location in-game moved in parallel. VR generally requires additional equipment, including a headset that usually covers a user’s eyes along with hand-held “pucks” to control a three-dimensional gaming interface, but the user generally stays in one place. With these new technological developments, related intellectual property law has struggled to keep up. This area of intellectual property law may be of particular interest to esports players. Players may want to protect unique elements of their avatars in-game to help brand themselves as they gain more notoriety and success. At present, there are several novel legal questions to explore when attempting to gain intellectual property protection for non-physical objects, projections, holograms and designs.
Design Patents: A Historical Look
The USPTO has long confined design patents only to non-functional design elements of “articles of manufacture,” as defined by the law. These “articles” must be physical, non-natural items. In other words, a design patented item must take up space and mass in the real world and must be man-made. Historically, an image alone would not qualify for a design patent, because an image itself is not a tangible item and only serves to portray an abstract idea. A protected design must also adorn an object that is man-made. A natural orange peel, even if injected with a non-natural preservative, would not qualify as an “article of manufacture” under this definition, because the orange peel retains its natural form and substance even when it has been treated.
However, if one were to print an abstract image onto an object – a t-shirt, for example – the resulting item could then qualify for a design patent. The image is “embodied” in the related article of manufacture. Under current precedent, images, patterns and prints must be specifically categorized as to the item they are applied in order to qualify for protection. A recent case denied design patent protection for a holder of a design patent for a printed chair when the same print design was applied by a competitor to a storage basket. The court held that the pattern itself, even if applied to another item in the same home goods category, could not be covered by the chair’s design patent. This example demonstrates the struggle that intellectual property holders have faced in order to best protect unique elements of design.
Lack of Precedent for New Technologies
There is a lack of precedent directly addressing new technologies that do not have a physical embodiment, but that can perform a function (e.g., an interface for a digital keyboard or a hand-controlled AR or VR device). Certainly, computer-generated objects can lack a “physical form” in a static, traditional sense, yet may function as an integral part of a digital product. In limited contexts, computer-generated icons that are integral to the functioning of a computer have been held to be suitable for design patent protection. One recent Supreme Court case extended design patent protection of an “article of manufacture” to include a component of that article, including a graphical user interface (GUI). A GUI can be a short animation or icon on-screen that comprises a component of the related device. However, VR and AR objects do not exactly square with this analysis, where a virtual object may have a three-dimensional rendering in a fully non-physical space and remain unrelated to separate computer function(s). AR and VR designs have not yet been directly held to be covered under design patent protection in the United States. Related intellectual property law, including copyright, is currently unclear about how these unique designs may be protected.
Singapore and Japan: Ahead of the Curve
The World Intellectual Property Organization (WIPO) has discussed this important development in its most recent survey of international intellectual property laws. Singapore and Japan are ahead of the curve in developing a legal framework to register and protect intellectual property associated with emerging VR and AR technologies. Both countries have eliminated the parallel portion of their design patent law requiring a physical embodiment of a product in order to obtain design-patent-like protection. That has been good news for the countries’ esports stars, who can protect their unique avatars and associated identifiers that help them to identify and brand themselves. The USPTO comment-gathering process may forebode a similar change for the United States in design patent protection. In the meantime, esports players, streamers and related public figures should contact a skilled intellectual property attorney to help ensure their brand is protected in the current state of the law.