Ever wanted to own a pair of shoes made out of fried pigeons? Neither do we. But there seems to be a market for this kind of particularly daring fashion choices in the Metaverse. Fashion and its corresponding legal conflicts are nothing new in the virtual world. For example, there has been considerable press coverage for MetaBirkin NFT, which is the subject of ongoing trademark lawsuits in US federal courts. Meanwhile, the Pigeon McNuggets case is another interesting example of intellectual property infringement allegations in the Metaverse, and how brand owners can help address this sort of issue in the uncertain and difficult-to-navigate space of the web3. It shows a creative approach that can be taken.
As background, September saw the opening of the first Metaverse fast food restaurant under the brand name McRTFKT’s. The restaurant was a not-so-thinly-veiled play at McDonald’s, selling a variety of deep-fried virtual goods such as Big Macs, Happy Meals, and McRTFKT’s signature Pigeon McNugget slides. , Virtual slippers that can be worn by Metaverse avatars. You may be wondering, “What is virtual fast food?” Well, it’s certainly not edible. A McRTFKT “product” is a digital item authenticated by an NFT and serves as proof of ownership. In other words, McRTFKT’s “fast food” products are effectively digital art that can be “worn” in the Metaverse and resold on his NFT trading platform. McRTFKT’s items were featured exclusively on his one such platform, OpenSea.
Trademark considerations
Dive into the McRTFKT project, which is a small-scale endeavor initiated by a tech-savvy artist, clearly meant to be humorous and garnering media attention, especially in the crypto and digital realms. It became clear that there is Controversy and humor can lead to big sales, including in the cryptocurrency space, as attention and novelty often lead to speculation that resale prices will go up.
Ultimately, commercial businesses using trademarks to sell digital art may May constitute “use in the course of trading”. , as well). That’s easy, but from a trademark perspective, enforcement in the metaverse can nonetheless pose some tough questions, such as…
– In which jurisdictions are the trademarks “used”? For example, in order to bring an action in the UK, the complainant usually has to show that the infringer directs its activities to the UK market. This can be a problem if the goods are purely virtual and the sale is made in cryptocurrencies and/or if the goods are held in a decentralized way such as blockchain.
– Who are you taking action against? These smaller ventures are mostly unincorporated and may require individuals to be tracked and deal directly. This can be a tricky and expensive process if the individual’s location is unknown or spread across different jurisdictions, or if no one has full control over the project.
– Are the products similar enough? As it stands, it is unclear whether digital artwork and real-world consumables can be considered sufficiently similar to pose a risk of trademark infringement confusion. This is subject to change as case law and practice develops, but for now, smaller brands are more likely to file trademark infringement lawsuits when faced with digital versions of their products or potential parodies of this kind. Established brands such as McDonald’s, on the other hand, are more likely to encounter infringements and parodies because of their fame, and may rely on the additional protection provided by fame/reputation. You may be able to. This issue is likely to be more successful in relation to enforcement activities.
Smaller art collectives like the group behind McRTFKT may be willing to abandon their projects if they face the threat of legal action. However, brands contemplating action should carefully consider the risk of bad press when starting a feud with a younger tech-savvy group in the age of social media.
What happened to the Pigeon McNuggets?
Ultimately, McRTFKT and its Pigeon Slide did not survive. Within weeks of launching, his website at McRTFKT was shut down and his NFT delisted due to domain name and trademark infringement complaints to OpenSea. This process blocks the ability of the general public to view her McRTFKT virtual environment and consumers to trade its NFTs. It also avoids the cost and difficulty of enforcement through the traditional means of requesting hearing of the complaint in a court of competent jurisdiction. Interestingly, the complaint that led to McRTFKT’s demise came from Nike, not McDonald’s. After all, Nike acquired his virtual fashion business, RTFKT, in December 2021, apparently taking issue with McRTFKT’s name similarity.
Complaints to NFT trading platform OpenSea follow a notification and takedown process similar to that of established social media giants. Complainant has unilaterally requested the platform to remove the infringing item and there is no set response or appeal process. OpenSea will determine if there is an infringement and if the item should be removed. So while the de-platforming process raises issues of fairness (and potentially raises issues of unfair threats), it is a quick and effective tool for brand owners facing breaches in the metaverse. .
It is important to note that deplatforming does not completely remove all traces of Pigeon McNuggets or other NFTs. Slippers owners can “wear” them in the Metaverse, but they cannot be traded in OpenSea. This is similar to removing web links from social media platforms. The website may still exist, but without a link from the platform it would be difficult for readers to find it.
Brand owners may not have access to this kind of expedited removal process in all circumstances. OpenSea is one of her leading players in the NFT market and has received significant investment from venture capitalists. It is therefore encouraged to monitor the platform according to the current practices of social media companies in order to keep investors satisfied. I can’t say that about marketplaces that adhere to a ‘type’ culture.
McRTFKT’s story came to an end soon after, but it continues to navigate the legal landscape of the Metaverse era.
Eleanor Merret Partner of CMS Cameron McKenna Nabarro Olswang LLP, specializing in brand protection and enforcement. This article was co-authored with his Oliver Roberts, an apprentice attorney at CMS.
