June 17, 2019

As the name suggests, virtual reality (VR) technology aims to create a digital 3D environment in which a user is able to experience and interact with a landscape or scenario in a way that mimics real-life interactions. Usually, this is delivered via a headset that allows the user to become immersed in the VR world through an integrated display.

A sense of realism can be achieved in a number of ways. For example, advances in hardware processing speeds lead to ever-improving frame rates (the frequency at which the individual images appear on a VR display). This, in turn, results in smoother and more convincing digital environments. Further technological developments mean that the traditional visual and audio elements of VR applications are now also being combined with other sensory elements, such as haptic technologies (which simulate the sense of touch), to create a more holistic user experience. Exhibitors at consumer innovation showcase CES 2019 recently demonstrated many exciting technologies designed to deliver a more “immersive” VR experience, such as Cybershoes, which enable users to translate the physical motion of walking to movement within VR-enabled games.

However, while improvements in VR technologies are fascinating and no doubt give rise to interesting and potentially patentable innovations, one might argue that if they are not deployed to allow users to experience the things that they encounter in everyday life – including brands and products – then true virtual reality has not been achieved. It is this additional frontier of VR development that this article will explore.

Urban landscapes

For the urbanites among us in particular, the buildings, monuments and other landmarks that make up our towns and cities are a significant feature of the world that we inhabit. It therefore makes sense that a VR application that wishes to offer a user the ability to explore a virtual representation of a real-life city would include the actual architecture one would encounter there. Taking London as an example, that would include such historic buildings as the Houses of Parliament and St Paul’s Cathedral, as well as modem and striking buildings such as The Shard, the “Walkie Talkie”1 and the “Cheesegrater”. Similarly, one would expect to find Nelson’s Column in a virtual Trafalgar Square, the Shaftesbury Memorial Fountain in Piccadilly Circus and the Orbit Tower in Queen Elizabeth Olympic Park in any truly “realistic” representation of the city. The same is, of course, true of towns and cities throughout the world.

Reproducing actual buildings and structures would therefore be an important part of creating a truly “realistic” VR representation of a real place. However, doing so gives rise to a number of potential IP issues.

As explored in detail in issue 445 of the CITMA Review, a number of famous buildings and landmarks are the subject of trade mark registrations. Assuming for present purposes that such marks are validly registered, the reproduction of their subject matter in a VR context raises interesting and complex questions of trademark law. For example, would the reproduction of a building within a VR system that aims to produce a realistic representation of a real-world location amount to a use liable to affect the function of the relevant trade mark, such as to give rise to potential infringement?

Similarly, would the accurate reproduction of branding on a digital representation of a McDonald’s outlet, for example, amount to a use of the famous “golden arches” that is liable to affect the essential function of a trade mark in the context of a digital world that is striving to replicate “reality”? It would be a brave studio that proceeded on the basis that the wholesale incorporation of unlicensed third- party brands on buildings (or, indeed, in oilier contexts) in a virtual world does not infringe any trade mark rights on this basis alone. Naturally the surrounding context within which any such use took place would be determinative of whether any of the relevant grounds of infringement were engaged.

In any event, the common-law action of passing off may well cause further issues should the use of a building and any associated branding leave users with the impression that the reproduction of these things is licensed. This would likely be all the more true where the building itself is the subject of merchandising activities, such as The Shard or Wembley Stadium.

Both sculptures and works of architecture (defined as buildings or models for buildings) are capable of copyright protection in the UK as “artistic works” under the Copyright Designs and Patents Act 1988 (CDPA), with protection of older works also possible under the 1956 and 1911 Copyright Acts. Might the inclusion of representations of such works in a VR setting therefore infringe UK copyright?

One answer might be to point to s62 CDPA, which excludes from infringement the reproduction (in the form of graphic works) of artistic works “situated in a public place or in premises open to the public”, as an effective “shield” to such a claim. Adopting the approach of the Court of Appeal in Nova v Mazooma, it seems likely that each still frame produced in a VR display amounts to an individual graphic work which ought to engage this so-called “freedom of panorama” exception. However, this exception does not extend to any copyright subsisting in the architectural plans and drawings for a protected work, which might be an obvious reference point for the creation of a virtual reproduction (particularly if internal aspects or features are to be used), the copying of which might therefore give rise to infringement. Moreover, while a similar exception is found under copyright laws applying in other jurisdictions, the position does vary. In France, for example, the equivalent exception does not extend to “commercial uses”, which may, therefore, rule out its applicability to a commercially exploited VR application. Moral rights are another potentially important consideration. For example, s80 CDPA provides that an author has the right not to have its work subjected to “derogatory treatment”. In this context, “treatment” means any addition to, deletion from or alteration or adaptation of the work, which will be considered “derogatory” if it amounts to a distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author. While this right does not apply to works of architecture that are buildings, if a VR system enables users to interact with and manipulate their surroundings in order to enhance the “reality” of the experience, then the ability to destroy or deface a protected sculpture within that VR world might infringe the moral rights of the author of that work, if such rights have been asserted. The recognition, duration and scope of moral rights is another area that varies significantly from jurisdiction to jurisdiction and, interestingly. Article 6bis of the Berne Convention appears to have a broader scope than s80 CDPA, as it extends to (among other things) “derogatory action in relation to the said work” (emphasis added). This suggests that the scope of the moral right that applies under UK law may well be narrower than the equivalent laws of other signatory states.

Dangerous step

Of course, a truly “real” virtual experience would ideally include all sorts of other “things” that we encounter in our daily lives, such as vehicles, furniture and consumer products. If one wanted to create a realistic virtual environment, then reproducing all of those things in the same way as they are encountered in real life (ie to the same shape and specification as products that we encounter in the real world) would be a natural step to take. But to what extent would including representations of real-world products that are manufactured by third parties in a VR world raise IP issues?

When considering the reproduction of the shape of products, design rights immediately come to mind. While it is unlikely that UK unregistered design rights would come into play in the context of VR, given that it confers the exclusive right to make articles to the protected design, in the absence of further guidance from the C JEU, there is no obvious limitation to the right conferred by UK or Community registered and Community unregistered design rights, which simply cover “use”. Although each case will turn on its merits (which, in the case of registered rights, will depend very much on the design actually depicted in the relevant registration), a catch-22 situation arises in that, by striving to achieve ever greater “realism”, the creator of a virtual world will also in effect be seeking to satisfy the infringement test, namely to reproduce a design that produces the same overall impression on the informed user.

In addition to design protection, many brand owners obtain registered trade mark protection for the shape of their products, as well as the more “traditional” marks applied to those goods, such as brand names and logos. While shape marks have been given quite a tough time (as anyone who has followed the KitKat saga will attest), if the issue of validity is put to one side, then the interesting and complex questions of trade mark law noted above in the context of registrations for buildings and landmarks apply equally here.

In the UK, an associated passing off risk might be heightened in the case of the reproduction of products in particular, given the number of years that consumers have been exposed to active product placement in other media, such as film. This may increase the likelihood of an assumption that the “virtual” reproduction of a real-world product in VR is a similar form of authorised use of the likeness of that product. A finding of passing off based on a similar rationale to that applied by the Court of Appeal in the Irvine v Talksport case certainly could not be ruled out.u

In the UK, copyright is less likely to be an issue. The “closed list” approach to the categorisation of protected works in this jurisdiction significantly limits the extent to which copyright might be said to exist in everyday functional items. Section 51CDPA also operates to exclude from infringement the making of an article to a design document (in which copyright may subsist as a graphic work) or copying an article made to such a design for anything other than an artistic work. That said, copyright may nevertheless subsist in certain aspects of “everyday” items, such as the pattern applied to the surface of a product, as well as logos that may or may not also be the subject of trade mark protection. So, the consideration of copyright cannot be entirely ruled out.

Populating the landscape

An otherwise “realistic” VR world featuring real-life places and “things” would be a lonely place if not populated by other people to interact with. So, what if “real-life” people were also reproduced in VR? English law does not recognise “personality rights” as such, though the decision in Irvine might well form the basis of a claim in passing off to the extent that the inclusion of a likeness of a well-known individual gives the impression of endorsement of the VR “world” by that person. While straying somewhat out of the realm of IP, it is foreseeable that the way in which such a character interacts with users could also give rise to other issues under defamation laws.

Exciting opportunity

There are many reasons why reproducing the world around us in VR is an attractive proposition and continuing improvements in VR technology mean that the ability to experience digital versions of far-flung destinations is now a very “real” and exciting possibility.

And, although this article has focused largely on risks, as VR technologies become ever more mainstream they also create opportunities for rights holders.

This may be by making reproductions of works accessible to a much wider audience, or by offering further opportunities for consumer engagement and interaction with products and brands. Only time will tell whether these opportunities become reality.

This article was first published in the March/April 2019 issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk