The localization of IP infringements in the online environment: from Web 2.0 to Web 3.0 and the Metaverse

Abstract

Eleonora Rosati is a Professor of Intellectual Property Law at Stockholm University (Sweden) and Of Counsel at Bird & Bird in Milan (Italy). The present contribution is a re-publication of a study prepared at the request of the World Intellectual Property Organization and published under the same title on 1 September 2023. Over time, technological advancements have resulted in novel ways both to exploit content and to infringe rights—including intellectual property rights (IPRs)—vesting in them. Legislative instruments have consistently clarified that pre-existing rights continue to apply to new media, ie, means to disseminate intangible assets, including in digital and online contexts. In terms of rights enforcement, however, the progressive dematerialization of content and dissemination modalities has given rise to challenges, including when it comes to determining where an alleged IPR infringement has been committed. This study seeks to answer the following questions: (1) Can the same criteria and notions developed in relation to other dissemination media find application in the context of IPR infringements carried out through and within the metaverse? (2) Does the distinction between centralized and decentralized metaverses have substantial implications for the localization of IPR infringements? The first question is answered in the affirmative. In relation to the second question, it is submitted that the distinction between centralized and decentralized metaverses—while of substantial relevance to the determination of enforcement options—may not have significant implications insofar as the localization of IPR infringements is concerned. Over time, technological advancements have resulted in novel ways both to exploit content and to infringe rights—including intellectual property rights (IPRs)—vesting in them. Legislative instruments have consistently clarified that pre-existing rights continue to apply to new media, ie, means to disseminate intangible assets, including in digital and online contexts. In terms of rights enforcement, however, the progressive dematerialization of content and dissemination modalities has given rise to challenges, including when it comes to determining where an alleged IPR infringement has been committed. The importance of such an exercise cannot be overstated: it is inter alia key to determining (i) whether the right at issue (eg, a registered IPR) is enforceable at the outset, (ii) which law applies to the dispute at hand as well as—in accordance with certain jurisdictional criteria—(iii) which courts are competent to adjudicate it. For example, determining that the relevant infringement has been committed in country A serves in turn to determine (i) if the right at issue is enforceable at all, given that IPRs are territorial in nature. So, if the IPR in question is a national trade mark, the infringement needs to be localized in the territory of the country where the right is registered; (ii) whether, eg, country A’s law is applicable to the dispute at hand and (iii) if, eg, the courts in country A have jurisdiction to adjudicate the resulting dispute. This said, questions of applicable law and jurisdiction should not be conflated. Answering the former serves to ensure that a court does not have to apply more than one law, but rather on the of infringement to the law applicable to the such a to ensure that one law is applicable does not in the context of jurisdiction which for more than one The localization exercise has to be when the is committed in a digital online For infringements in courts the have developed to the the where (i) the the (ii) the content be and (iii) the is of criteria are of has in the of on a of including of relevant of an in a national is to is a substantial with a given is it is the the of to the and more of not is that such a be the rise of and for digital In the progressive of the be the of has for it has been to the of the new it is that the be and the of the and In metaverses have been developed which centralized and The distinction is on whether the at issue is and a eg, a whether it is a and decentralized eg, a decentralized as it to the of as the to has the to new to the and application of the criteria The present study is with the of such a study seeks to answer the following questions: the same criteria and notions developed in relation to other dissemination media find application in the context of IPR infringements carried out through and within the Does the distinction between centralized and decentralized metaverses have substantial implications insofar as the localization of IPR infringements is The IPRs are trade and The is to infringements committed of and an and on are and as such an it is that a is through which the questions at the of the present study be answered in terms that are as and as to of relevance to the question of of IPRs online and in the is the of the be and in the alleged IPR infringement that not but the of other than the including are to The study is as and the to the present as well as relevant and of the relevant for the localization of IPR infringements in to and as well as national This a distinction between and registered on digital and online and and on localization for the of determining applicable law where A of the criteria on and of infringement be and the of resulting is with the of and whether the of the find application in relation to new at in as the questions are the one whether the same criteria and notions developed in relation to other media find application in the context of IPR infringements carried out through and within the metaverses is answered in the affirmative. is submitted that the distinction between centralized and decentralized metaverses—while of substantial relevance to the determination of enforcement options—may not have significant implications insofar as the localization of IPR infringements is concerned. study as a as the courts in in relation to to for the localization of IPR including committed through the are the that substantial in terms of that to a with a given for the of both determining applicable law and the of and enforcement the question whether the has for a more of both at the a of the is a means of a on a to a is a is a between the and of the on the one hand and the rights and to online on the are to to the through to the territorial of the relevant that it more to online in that at the of of the in a for a on the of under law for the of The has which is the second of the that with the of and media and an more than be is to in the and not the more of have not and the application and enforcement of IPRs to inter alia the the of an IPR infringement is The importance of such a which be means of the infringement of both and registered IPRs in cannot be overstated: it is inter alia key to determining (i) whether the right at issue (eg, a registered IPR) is enforceable at the outset, (ii) which law applies to the dispute at hand as well as—in accordance with certain jurisdiction criteria—(iii) which courts are competent to adjudicate it. answer it be to a the answer to the following the the the the and the have in it has been are media in the of the are means to disseminate not in a new media have new ways to exploit content and with infringe relevant rights has not relevant and to be and the have to be not to new and have been the to both the and of In terms of and and courts have consistently IPRs applicable to the of through new as an example, the World Intellectual Property Organization and and at to and of on the other digital other the and clarified that pre-existing rights continue to apply in the digital not In courts have consistently rights enforceable in digital and online contexts. So, in which the the the has both the relevant rights to the and and applicable in and The same is for that not the rights the for example, not law to to when it the through the of the the under the right has been to be in the context of digital through of the The apply to other IPRs So, the of of a trade for the of infringement has been to courts have not the of rights to in that the to and the as a new of dissemination of content and other in infringement of the IPRs A first in the novel the has been relevant to at of for a Over the of the has been has been technological including the of and the of for digital the to and of the of which is the for and to more than has been the The is to be and the of the and have to the as to the and with and the of advancements and to with the digital the of and with the of such a however, to be For the present it is to that the of does not to a metaverses have been developed which centralized and The distinction is on whether the at issue is and a eg, a whether it is a and decentralized eg, a centralized metaverses content is and to the in accordance with the terms of in decentralized metaverses is to the in relation to such content with the relevant content the that of a as a is and of to be between the of a and that of with the that the of of a to that of a the application of IPRs to media is determining the of an issue that has given rise to when the of such rights in is the one to the localization of alleged infringements as a of In the localization of the infringement to the in which the is to as a of the law applicable to the The localization of the infringement in is relevant to the of the of within the territorial of the and to the jurisdiction of the court the of within the territorial jurisdiction of the In however, questions of applicable law and jurisdiction should not be conflated. Answering the former serves to ensure that a court does not have to apply more than one law, but rather on the of infringement to the law applicable to the such a to ensure that one law is applicable does not in the context of jurisdiction which for more than one be in in online the between centralized and decentralized has given rise to and have been time, present an in terms of In and as an example, has as a to jurisdiction in with to both registered and The localization of the alleged infringement has the of the of the court in accordance with relevant criteria under and national For example, under law, the of the rise to the the where the one of the criteria to jurisdiction under The same is under of the with to between of the both and the courts of the in which the of infringement has been committed inter alia have jurisdiction in relation to the alleged infringement an trade right that the present study seeks to answer the following questions: the same criteria and notions developed in relation to other media find application in the context of IPR infringements carried out through and within the Does the distinction between centralized and decentralized metaverses have substantial implications insofar as the localization of IPR infringements is The IPRs are trade and The is to infringements committed of and an and on be and as such an it is that a is through which the questions at the of the present study be answered in terms that are as and as to of relevance to the question of of IPRs online and in the is the of the be and in the alleged IPR infringement that not but the of other than the including as are to The study is as of in it the relevant for the localization of IPR infringements in to and as well as national a distinction between and registered on digital and online and and on localization for the of determining the territorial of where A of the criteria on the and of infringement be and the of resulting This be relevant to the of the of in the online IPR enforcement with in relation to infringements committed in the including where the and localization of is with the of and whether the of the find application in relation to new at in In for and as a as the courts in in relation to to to the localization of IPR infringements committed through the are the that substantial in terms of that to a with a given for the of both determining applicable law and the of and enforcement the question whether the has for a more of both at the A of which is the of of rights under is territorial nature. In the in given territory on the law of that with to both and This said, the rather and and (eg, in the context of trade a of have the of the between national IPR has not through the of of but in the of IPR enforcement have been on a the a is to the other on enforcement of The in of the are a of following the of the has been a the it and as a IPR enforcement enforcement, have been at the In the the enforcement of in the that it does not that are more to the IPRs with which the present study is and relevant on the localization of a distinction to is that between trade and and registered trade and The present the for infringements of a on the same apply to other the relevant of and national with and enforcement at the the not instruments to a enforcement are the and the in and in the is on the of national and of for of of of the and of first is not that of the a of the of to the localization of The at to and of on the other digital the which with 1 to of the and the as key to and the on and rights the and the to to in and in the both instruments clarified that rights continue to apply in the digital and new online to a certain in to rights in the digital the of on IPRs has in relation to both law for and of and of law determining jurisdiction and applicable law in infringement The former have been through both and The have been through In terms of determination of the law applicable to the infringement of IPRs in in the is in a to determine the applicable law in infringements of the of the of the under The under is relevant to law, the localization of the to The relevant for IPRs and registered national IPRs are in and The in of the is that in a be in the courts of that The in as an that in a be in in to in the courts for the where the The of law in is not to the of the but rather to determine which court has jurisdiction in and in between and to the enforcement of Over time, has a and at it is that the where the be the where the the of the rise to that the be the of the the courts for of is in the law of the and where it is not to a of the should be on the at the rather than that at the of the have in in which the is an localization be that of the country where the relevant has said, the of where to has inter alia implications for the that be the has clarified that if one in an other than the one of of the ie, the where the content is the court is competent to adjudicate on the on that A in with the be in other including law In questions of applicable law are answered in the same as in the given the in in instruments the jurisdiction in be in accordance with a jurisdiction which determining if the is to the where the court is (eg, that the resulting not be under the law of the country where the court is be them. a does not to in the jurisdiction in inter alia needs to be in a which to the of a court to in a on the of the in such a of with inter alia said, the of to jurisdiction with court on of and eg, to the of and where the and the applicable to the to infringement under the in which the alleged infringement an is courts whether to the when determining jurisdiction when the of the are whether the not within the territory to determine law and This said, courts have that it is an under the to content a and the content to the eg, such content for the for registered the to in the of law is a in with the territorial of under law, the localization of the to The relevant for IPRs and registered national IPRs are in and registered the and of the to be in accordance with the law of the country where a national trade is that trade one to to in eg, through application for national in of the concerned. A of the territorial of infringement is not of relevance to it is to that the of for the registered IPRs in the present contribution is to the relevant and and within the and as trade are the under the not eg, the In for a trade to be in relation to and it to the to of the and to with and The of the at the of has the digital in In be the one it not be that for to the other courts in and the of the for to the digital including in the context of and of law developed in that have not a on the localization of IPR infringements and the of the in relation to inter alia national trade for that infringement the of for a of of an be the courts of the in which the of infringement has been committed In the courts of the in which the of infringement is committed have jurisdiction in of of infringement committed within the territory of that with the that the of the territorial jurisdiction of the court is to the that be than if in accordance with where the is The question that is whether, the of of the to infringement the of of infringement within has the same as where the within the In the answered in the that the for jurisdiction to are than within jurisdiction to the courts in the where the to the not in the where such that the in in the such to trade law, it is that the that and of the are not and to where the in is advancements and the of content and the and of have the dissemination and of both and in has a in the in which not content is and but are to the has of in digital have a rights have to a on and the and of content to the with to a has both the between and and and and have in and at both national and In has given rise to insofar as IPR enforcement is including questions of localization of the relevant time, courts have to and and in relation to new and infringement including in the context of eg, infringement In the to of has not resulted in significant of in infringement has more in have criteria to determine (i) the court is competent if it is in a country which the content is (ii) with the courts in the territory where the the and (iii) courts in the territory at which the content is have criteria are in should be that in has as a to determine applicable law and jurisdiction in and in of it be in In relation to both registered and in the of a in to alleged infringements in for of jurisdiction and applicable law has been the of the a certain In the for example, has been the to the infringement of the right and trade is a inter alia the in to the of application of that to of that are not in the A is well under the law of the with the of courts have a in relation to but not to in determining the of the infringement as such when the of the A more of the and is with the in and the the of in which the of infringement the intellectual property right at as to the law of the country where the of at the of the committed have been committed. 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is at that be as within the in the of and the of that the of an online be for of to the a and to to the not to in the courts have in other of including trade For example, in the of of and to the in and and and the that to as to the court an for of a trade to of the trade in the territory the registered trade and within the right that if, to the it be that the is at in that the of the the a has been in in relation to the the of of and clarified that of the territory be the to a trade mark, and of the relevant and of the that the localization of the of the alleged IPR infringement be as a jurisdiction This is with to both registered and the has an to the of where the in relation to on a of in the for the of rise to the the has to that such a cannot be as jurisdiction to courts in a in which the alleged has not In the that the rise to the is where the of the for the of the content is In a the one at issue the to such an infringement be localized at the where the that is where the and 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of trade law, in an of the application of said, the in and does not and the question of jurisdiction to the of the rise to the it is to the more in and a In the that an for infringement be the courts of the where the the are of whether the for the of the at issue of the to which the rise to the is where the alleged and the of and for not be it jurisdiction of the courts where the is and the jurisdiction of The for of be as in the at which such is of whether a has a is the that courts in that are to whether the alleged infringement does in the clarified the to to and determine the of the court For an of to be at a certain it is not that such are and for to be to other insofar as to with the in which the court of the infringement is is for the court to the of the that of infringement have been committed on the territory of a is it in and be given to the in to of the the of the of a a other than the in the in which the is of with an of on an in to to the that of in other of a other than that of the in which the is of an of in in in as the it is not to determine the of of the at a be the that the the of the of an to A distinction that is relevant to for the of the present is that between of and be not but are to infringe as the are an distinction is The first the of of and as a of In for of in relation to a in the but not the and the that of a of certain of a in an be to not in relation to should the be but at the The second distinction the of of on a does in the be in as are relevant to the of IPRs in the including in in which are to and be the localization of the In the in in with in the context of in and is to to the of For example, if one an of and that terms of a answer insofar as is out of developed through in with the of of for is when on enforcement including are not the A of the on the and localization to and to an and more of the in the enforcement to the of IPRs and the that such a has given rise be in with to IPR localization and enforcement to the In the 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the has the of the the that the at issue does not an which is such as to it of the In where the relevant is of the be on a In the of means that it be a for to said, in the for the first that the of an that the of content be on a for The clarified that the of of a under on the of which to that the of the is both and to the of whether the (i) technological that be a in the at issue to infringements on and (ii) in content to the (iii) for the of content such which be the that the has a that of to content to the that The that a has that content be is and is the that it on a in the to a if a has a and the has to to that In the the of under trade law with to an online that for