The objects we own and surround ourselves with serve aesthetic and functional functions, but also act as a form of expression of our individuality and a means of communicating messages and ideas, both in the analogue and virtual world. Industrial design is omnipresent in our lives, and as the latter increasingly take place in virtual environments, the former must transit into these digital spaces with increasing value and importance, both economic and cultural. Blockchain technology has led to the transposition of objects from the analogue world into the digital environment. Designs, despite being industrially reproducible, are traditionally created in series or collections, which is consistent with the practical functioning of non-fungible tokens or NFTs, the means by which the industry has generally opted to capture unique and unequalised creations on the blockchain, giving rise to tokenised designs or “crypto-designs”.

Creators and rights holders of industrial design works have a clear interest in taking advantage of the possibilities of web 3.0 by tokenising their designs. Expansion into these new markets allows them to strengthen their relationship with their clients and their positioning in the market, personalise the design to the client, associate their brand with technological innovation and exclusivity, and generate speculation and excitement by offering discounts and benefits, exclusive content or physical products associated with digital assets. While it has been the fashion industry that has been the pioneer in adopting cryptocurrencies, with examples such as Dolce & Gabbana1, Louis Vuitton2, Gucci3 or the Spanish brand Mango4, the archetypical sector of furniture is not far behind: crypto-designs have been created by Andrés Reisinger5, Misha Kahn6, Romulo Temigue7 or the Emirati firm 4Space Design8, among others.

From a legal perspective, there is no doubt that a creation protectable as an industrial design can manifest itself in the form of a digital asset, either as soon as it is created or subsequently. The legal consequences raised by these crypto-designs have already been taken into account by European law. Indeed, Directive 98/71 and Regulation 6/2002 are currently in the process of being revised to update the legal regime for design in order to encourage innovation and the creation of new product designs in the digital era, among other aspects. These European rules have direct effects on Spanish legislation, which is mainly made up of Spanish Law 20/2003 and its implementing regulation, Royal Decree 1937/2004, of 27 September. Below, we will review some key aspects of design protection that are directly affected by tokenisation and in which the proposals for the recast Directive9 and the new Regulation10 introduce new features.

A concept of design is one of the aspects that will change in the imminent future to adapt to the virtual world. To the definition of design, “the appearance of the whole or a part of a product resulting from the features, in particular, the lines, contours, colours, shape, texture, materials of the product itself and/or its decoration”, the phrase “including the movement, transition or any other sort of animation of those features” will be added in fine, thus giving express protection to animations, gifs or dynamic designs.

Furthermore, the concept of product in which the design is incorporated is modified as “any industrial or handicraft item other than computer programs, regardless of whether it is embodied in a physical object or materialises in a digital form, including: (a) packaging, sets of articles, get-up, spatial arrangement of items intended to form, in particular, an interior environment, and parts intended to be assembled into a complex product; (b) graphic works or symbols, logos, surface patterns, typographic typefaces, and graphical user interfaces“. In this way, it is recognised that a design may not be physically embodied and may be incorporated into virtual graphic works.

As regards the requirements for access to protection, a design must be new, in the sense that an identical design, in the sense of their features differing only in immaterial details, has not been made public; and it must be unique, meaning the overall impression it produces on the informed user must differ from that produced by any design that has been available to the public, taking into account the degree of freedom of the designer in developing the design. The sectors that lend themselves most to tokenisation are those in which these requirements are amply exceeded and in which the designer’s creativity is extensive, such as fashion or furniture, while tokenisation is unlikely in sectors in which the designer’s freedom is more limited, such as mechanical parts.

The design right arises through registration with the Spanish Patent and Trademark Office (SPTO) in Madrid (national design) or with the European Union Intellectual Property Office (EUIPO) in Alicante (Community design), except for unregistered designs, whose protection arises when they are made available to the public. There seems to be no impediment for virtual designs to gain access to registration, as is already the case, for example, with designs intended for 3D printing or user interfaces. The protection granted has a duration of five years, extendable up to a maximum of twenty-five years for registered designs, and three years for unregistered designs, without prejudice to the possibility of cumulation with copyright protection.

The embodiment of the design as a digital asset may or may not incorporate the transfer of the intellectual or industrial property rights protecting the underlying asset: the design right protecting the product appearance represented in the NFT. The assignment or licensing of design rights could be articulated through an NFT associated with smart contracts. Likewise, it is to be expected that the acquisition of a crypto-design will be accompanied by an implicit or express licence that allows its exhibition, use and transmission on the internet, but not, for example, its commercial use or the generation of derivative works, leaving the inclusion of these powers in favour of the acquirer to the discretion of the autonomy of the parties.

Crypto-designs may also constitute a form of infringement, as also foreseen by the future reform of European law. In this context, any digital asset that reproduces a protected design and that does not cause a different overall impression on the informed user than the one it produces will constitute an infringement, whether or not it is an independent creation. This opens up a range of possibilities for the holders of industrial design rights to defend themselves in the metaverse.

Activities involving use of the design that may constitute an infringement include “(a) making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied; (b) importing or exporting a product […]; (c) stocking a product […] for the purposes mentioned”, and in the future regulatory reform, the addition of “creating, downloading, copying and sharing or distributing to others any medium or software recording the design for the purpose of enabling a product […] to be made”. This last behaviours will amount to a use of the design subject to the authorisation of the right holder, an addition designed for 3D printing, but perfectly applicable to cases in which a work protected as a design is tokenised without the consent of the right holder, or the overreaching by the acquirer of a crypto-design of the powers conferred on them by the acquisition of the design.

All in all, the existing European legal framework currently under review and modernisation proves to be flexible enough to accommodate the rapid technological changes that are already transforming the design industry. The European legislator has rightly envisaged a technological shift in European Design Law. While these reforms were intended to address 3D printing, a technological breakthrough that directly affects the world of design, NFTs represent a new embodiment of design works, a way to achieve greater reach, impact and significante, both commercial and cultural, for industrial design, and ultimately, an exciting business and research opportunity.

— Clara Isabel Cañero Lois, PhD in Law cum laude from the University of Valencia and postdoctoral researcher in LegalCripto by BAES

How to cite this post: Cañero Lois, C. I., ‘The protection of industrial design in the metaverse’, The Key of BAES, 21 February 2024, https://www.baeslegalcripto.eu/legalcripto/en/the-protection-of-industrial-design-in-the-metaverse/

This work is licensed under CC BY-NC-SA 4.0

  1. J. Maldonado, ‘Nike, Dolce Gabbana y Tiffany facturan $223 millones con ventas de NFT’, Observatorio Blockchain, https://observatorioblockchain.com/nft/nike-dolce-gabbana-y-tiffany-facturan-223-millones-con-ventas-de-nft/ ↩︎
  2. M. McDowell, ‘Louis Vuitton to sell €39,000 NFTs’, Vogue Business, https://www.voguebusiness.com/technology/louis-vuitton-to-sell-euro39000-nfts ↩︎
  3. E. Rosicart, ‘Gucci en el Metaverso: Revolucionando el Marketing de Moda en el Mundo Virtual’, 2023, https://metaverse-news.es/gucci-en-el-metaverso-revolucionando-el-marketing-de-moda-en-el-mundo-virtual/ ↩︎
  4. A. Zarzalejo, ‘Mango gana el juicio por exponer sus cuadros de Miró y Barceló en el metaverso’, 2024, https://www.expansion.com/empresas/2024/01/19/65aa550a468aeba6058b45d0.html ↩︎
  5. K. Marchese, ‘NFT Artist Andrés Reisinger presents impossible ‘phygital’ artwork in the Middle East’, 2022, https://designwanted.com/sun-leaf-andres-reisinger/ ↩︎
  6. Christie’s, ‘‘I wanted to push the idea of furniture’ – Misha Kahn on creating the first design NFT’, 2021, https://www.christies.com/en/stories/misha-kahn-on-the-first-design-nft-b7d7438569524c5aa8bf677c869227b8 ↩︎
  7. K. Marchese, ‘NFT designer Romulo Temigue on his dreamy digital furniture’, 2021, https://designwanted.com/nft-romulo-temigue-digital-furniture/ ↩︎
  8. K. Marchese, ‘Meta4Space launches NFT collection to help brands enter the Metaverse’, DesignWanted, 2022, https://designwanted.com/nft-furniture-collection/ ↩︎
  9. Proposal for a Directive of the European Parliament and of the Council on the legal protection of designs (recast) (COM/2022/667 final), https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=celex%3A52022PC0667 ↩︎
  10. Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002 (COM/2022/666 final), https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A52022PC0666 ↩︎