BMW v. TurboSquid: Virtual Patent Infringement?

The blog, Protecting Designs, reported an interesting case filed last month that may have legal ramifications to the burgeoning VR industry:  BMW v. TurboSquid, Inc.

The issue:  Can selling a digital 3D model of a car, which exists only in virtual reality, infringe a design patent?

According to Wikipedia,

TurboSquidTurboSquid is a digital media company that sells stock 3D models used in 3D graphics to a variety of industries, including computer games, architecture, and interactive training. The company, headquartered in New Orleans, Louisiana in the United States, is most known for brokering the sale of 3D models in return for a percentage of the sales. As of 2014, TurboSquid had over 370,000 3D models in its library, making it the largest library of 3D models for sale in the world.

TurboSquid’s website lists Sony Pictures, Activision and Pixar as a few of their clients.

On May 3, 2016, BMW filed a complaint in a federal district court in New Jersey alleging, among other claims, that TurboSquid’s 3D models of certain vehicles infringe BMW’s design patents.  In particular, BMW alleges that TurboSquid is “marketing 3-D virtual models of vehicles that infringe the BMW trademarks, trade dress, and design patents.  [TurboSquid] markets and tags BMW-trademarked 3-D virtual models of BMW vehicles as suitable for games.”

mini
Image from U.S. Patent No. D664,896

BMW’s design patents (D473,165, D639,209, D664,896, D714,190, D714,687, and D724,495) are directed to BMW, Mini, and Rolls-Royce branded vehicles produced by BMW Group. The ’165 patent is titled “Surface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design,” and the other patents are each titled “Vehicle, toy, and/or replicas thereof.” BMW have also asserted trademark infringement claims against TurboSquid and is seeking injunctive relief, disgorgement of all of TurboSquid’s profits under 35 U.S.C. Section 289, attorneys’ fees and other remedies.

 

It remains to be seen whether “virtual” objects can infringe a design patent (or perhaps in a future case, utility patents).

For more analysis on the trademark claims, Patently-O had an interesting write-up which can be accessed here.

In the News: Magic Leap

magic leap

The secretive startup company, Magic Leap, made headlines recently with two stories of note.  First, as reported last week by UploadVR, Magic Leap is suing two former employees in federal court for trade secret misappropriation.  Magic Leap’s complaint alleges that Gary Bradski (Senior Vice President of Advanced Perception and Intelligence) and Adrian Kaehler (Vice President of Special Projects)  worked together for at least a year, while employed by Magic Leap, to create and develop plans for a new company using “Magic Leap’s intellectual property and Proprietary Technologies” in violation of their various employment agreements.  According to the complaint, while at Magic Leap, Bradski was involved in projects that involved “deep learning techniques for robots,” and that Kaehler was “responsible for the definition and development of technologies of certain projects, as well as the technical vision, staffing, budget, and ultimate implementation of such projects.”  The complaint further alleges that Bradski “disclosed Magic Leap’s confidential information and trade secrets to third parties and specifically misrepresented to third parties that such confidential and trade secret information did not belong to Magic Leap.”

Magic Leap’s complaint is noteworthy in that it asserts trade secret misappropriation claims under the new federal Defense of Trade Secrets Act (“DTSA“), which was signed into law by President Obama only a few weeks prior to the filing of this suit.

Although the details of the allegations are somewhat vague at this point, more information will likely come to light soon.  Because the complaint also asserts trade secret misappropriation claims under California state law, Magic Leap must identify the trade secrets which were allegedly misappropriated with reasonable particularity pursuant to Section 2019.210 of the California Code of Civil Procedure.

magic leap-2In less contentious news, it was also reported in the past few days that the USPTO had issued a design patent, US D758,367, to Magic Leap for a Virtual Reality Headset.  The design patent contains eight drawings (one of which is shown to the left) and was filed on May 14, 2015.

However, Magic Leap’s VP of public relations, Andy Fouché, provided the following somewhat definitive statement to Tech Insider regarding the patent’s images:

“This is part of our R&D and experience validation, and is not at all representative of what our product will look like. Items that any company patents can be helpful to the entire process, regardless if they end up pursuing that path or not.”

So it appears that Magic Leap’s product will continue to remain a secret for now.