Digital Trademark and Design Patent Infringement

Guest post by Lucas S. Osborn, Associate Professor of Law at Campbell University School of Law. He will be visiting at Denver University School of Law for 2016-17.

Digital technology continues its collision with intellectual property law, this time in BMW’s lawsuit against the online virtual modeling company TurboSquid. TurboSquid sells digital 3D models of various items for use by game developers, architects, visual effects studios, etc.

This case is paradigmatic of a project Mark McKenna and I are working on, which analyzes trademarks in the context of digital goods. BMW complains that TurboSquid’s “marketing of 3-D virtual models” of BMW vehicles infringes BMW’s trademarks, trade dress, and design patents. Specifically, it complains that TurboSquid “markets and tags BMW-trademarked 3-D virtual models of BMW vehicles as suitable for games.”

Interestingly, although some of BMW’s registrations cover “miniature toy vehicles,” “interactive game programs,” and “scale model vehicles,” none of the registrations covers virtual models of vehicles. BMW also alleges that it “licenses its trademarks and patented designs for use in 3-D virtual models for computer games.”

BMW’s claims of infringement raise conceptual difficulties. Does selling a virtual object directly infringe a trademark or design patent that contemplates, or is in fact limited to, a physical good?

In thinking about trademark infringement, the core analysis focuses on whether the digital file is a good about which there is confusion as to source, sponsorship, or the like.  Confusion might arise from at least three mechanisms. First, TurboSquid might create a website environment that looks as if it is a BMW-sanctioned website, such as by using a domain name like or by designing the webpage to suggest that it is affiliated with BMW. The TurboSquid website does not do this.

Second, TurboSquid might cause confusion through the external labels attached to each file. If the file name/description read, “BMW authorized model of BMW X3,”  TurboSquid would falsely suggest an affiliation or source. But its external file labels read simply, “BMW X3” and the like. BMW will doubtless argue that this external file labeling provides an indication of source or affiliation, but is this so? Arguably the external description is nominative or descriptive because it merely describes what the file is, i.e., a model of a BMW car. Of course, TurboSquid could change all the external file descriptions to eliminate the potential confusion (i.e., “unauthorized model of BMW X3”), but courts should balance the burden on TurboSquid and the effects on user search costs against any evidence of the extent of actual or potential confusion.

Deciding whether the external file description creates confusion or instead is nominative bleeds into the third potential argument for confusion, which is that the content of the digital file itself causes the confusion. That is, BMW will argue that since the content of the digital file displays a BMW logo on the car, the purchaser will be confused as to source or sponsorship. The Supreme Court, however, seemingly foreclosed this argument in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). Dastar directs that a court should not use the content of the digital file to inform the confusion analysis.

Dastar copied footage from Fox’s Crusade in Europe television series and reused portions of that footage in its own videos without attribution to Fox. Id. at 26-27. Fox alleged Dastar committed reverse passing off in violation of § 43(a) of the Lanham Act by representing Fox’s content as its own. Id. at 27. The Supreme Court rejected Dastar’s claim, holding that “origin of goods” refers only to the “producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. Id. at 37.

The Court was concerned that allowing claims for reverse passing off in the context of copyrightable works “would create a species of mutant copyright law” that would conflict with the Federal copyright regime. Id. at 34. Dastar’s concern about conflicts between copyright and trademark law channels courts away from finding confusion based on the content of expressive works. See generally Mark P. McKenna, Dastar’s Next Stand, 19 J. Intell. Prop. L. 357 (2012). Thus, the content of TurboSquid’s files cannot form the basis of the confusion. The content of the files is protected, if at all, by some other form of intellectual property law, such as copyright.

Even assuming there is no point-of-sale confusion with the purchase of the digital file, TurboSquid cannot drive away freely just yet; it must contend with post-sale confusion. Post-sale confusion protects trademark owners when there is no point-of-sale confusion because the purchaser of the good knows it is fake. Courts have found that confusion can arise after a sale when the individual wears the infringing good in public, causing observers to see the branded item and become confused about whether it is genuine or not.

TurboSquid’s purchasers obviously will not wear the digital files in public. Nevertheless, they will use the files in downstream productions such as video games, and thus BMW also alleged there will be post-sale confusion. However, use of the models in expressive works like games and other video productions will not likely lead to an actionable trademark claim because the First Amendment protections provided to expressive works would likely trump any trademark claim.  See, e.g., Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008). Moreover, once again Dastar suggests that any potential confusion generated from the content of the video game or other expressive work is irrelevant under the Lanham Act.

Trademark law arose in a world of physical goods to protect manufacturers and prevent consumer confusion as to who manufactured the goods. In a digital world, manufacturing will increasingly be done, if at all, by individuals with 3D printers. Other digital models, such as TurboSquid’s BMW models, will never exist as physical objects.  Where consumers care about the quality of a digital file, trademark law can protect consumers from being deceived by indicia external to the file. But if purchasers are not confused about the source of the digital file based on external indicia, courts should channel any other potential claims (if any) to other areas of intellectual property law.

22 thoughts on “Digital Trademark and Design Patent Infringement

  1. 9

    The characterization of the holding of Dastar is misleading and unhelpful. Dastar does not stand for a proposition as broad as “a court should not use the content of the digital file to inform the confusion analysis.”

    Rather, (from memory) Dastar only holds that for purposes of a Lanham Act claim, the authorship of a copyrightable work is not a “designation of origin.” In other words, every claim of copyright infringement is not also a claim of trademark infringement (or false designation of origin) on the basis that the infringer is “passing off” the copyrighted work as his own.

    While the claim for design patent infringement may be problematic, the trademark infringement or false designation of origin claim here is straightforward. The 3D models and their descriptions both clearly include the BMW mark. This would give the impression to any user that the product is licensed, sponsored, or approved by BMW when it is not–i.e. customer confusion. I think that states a claim for trademark infringement (or false designation of origin).

    And I don’t think Dastar helps the defendant in this case. The long discussion premised on the idea that Dastar prevents consideration of the content of a work in the context of a Lanham Act claim is unhelfpul.

  2. 8

    There’s a number of good points made in this article but this:

    In a digital world, manufacturing will increasingly be done, if at all, by individuals with 3D printers.

    is a j0ke. Please step away from the S00per C0mp00ter Crack Pipe, people! Yes, 3D printers are a real thing. And yes they will become more popular and common place as prices drop.

    But they are not going to replace “manufacturing” in any of our lifetimes. Not even close. I’ll even go out on a tiny tiny limb and promise you that 3D printers won’t replace “manufacturing” in our grandchildren’s lifetime.

    As the article suggests, there is a problem with techn0logy “getting ahead of the law.” If we’ve learned anything from the steaming mess that is the US patent system, there is an even bigger problem with l0vers of litigation and lawyering pretending that humans are so techn0logical “advanced” that we’ve left left the physical world of behind and so, therefore, we must leave behind our laws — including the common sense limits we placed upon them.

    BMW’s lawsuit is nonsense. But it is a quintessential example of how a well-moneyed business (or individual) can leverage IP laws to harass pretty much anybody. It’s also a quintessential example of the hypocritical depths that certain people who spend most of their time railing against bad ol’ “BigCorp” will sink when it serves one of their primary purposes (i.e., to turn the world into an endless courtroom battle over who owns the right to “monetize” information).

    Here’s the deal: our trademark laws jumped the shark a long time ago when courts held that big companies could basically purchase the “right” to control how people express their perception of the company’s brand. That said, ownership of aa trademark does not provide a company with the blanket right to prevent people from communicating information about the trademark, even if that information is sold for a profit. I can take a picture of a McDonald’s franchise and sell it. I can even title that picture “A Truly Sxcky Restaurant” or “F@t City”. Similary, I can take a picture of a BMW and sell it. Or I can write a super detailed and accurate description of a BMW and sell it. It doesn’t matter if describe it or photograph it or created a 3D picture. It’s not trademark infringement.

    The lawyers who filed this case on behalf of BMW should be ashamed of themselves. But they’re being paid too much to feel any shame. They’re just laughing on their way to the bank, and their being cheered by equally shameless lawyers.

    1. 8.1

      MM there are already some specialized small batch or very complex products or replacement parts where 3D printing makes sense. But yes, 3D printing is simply not at all competitive with existing high speed fully automated injection molding, stamping, and other such mass-production systems.* [I get the impression that UMC calculations are missing from the formal education of most scientists and even many engineers, much less science writers and legal academics.]

      *And of course is is mass produced products that are the products that are vastly more likely to be worth the costs of suing.

      1. 8.1.1

        MM there are already some specialized small batch or very complex products or replacement parts where 3D printing makes sense.

        No doubt. And in “the future” there will be more such applications! Hooray for “the future.”

        But outside of video games and movies there is not a “future” on the forseeable horizon where all manufacturing is going to be done by “individuals with 3D printers” as the response (apparently) to every person on earth having evolved into some kind of floating logic in a digital “cloud.”

        I really have to question the isolated lives that some people must live when they make statements like the authors did here. Try to get out of the office every once in a while, people.

      2. 8.1.2

        Sure Paul – not yet (as might be very much expected with the initial stage of disruptive innovation).

        But hey, you and Malcolm keep on keeping each other nice and warm in buggy whip land.


          buggy whip land.

          Ooh, lookie kids! Mr. Techn0 is here to tell everyone about the s00per shiny future where awesomely crxppy fake att0rneys like him will 3D print their own courtrooms. Get ready! It’s just around the corner, along with your personal hovercraft that folds into your pocket.

          Hey, “anon”, are you still voting for Bernie in the general election? LOLOLOLOL

          Cuz you’re such a serious person.


            The “so serious” meme is your “poker tell” that you have no actual cognizant legal point to make.

            You might try to be aware of that mindless blight.

  3. 7

    Did we not just have a denture case that held that “digital items” were NOT goods…?

    1. 7.1

      Yes, but that was whether or not the ITC had jurisdiction over the importing of software for the making of dental fixtures.

      1. 7.1.1


        “Goods” are not “goods” unless they are “goods”….?

        Anyone else see a problem with that?

        (and it was NOT the importing of software, Paul – it was the importing of the digital goods [the files] that the software used)

  4. 6

    Per 35 USC 171 design patents cover “an article of manufacture” and 35 USC 291 on enhanced patent damages is in terms of the design having been “applied” to “an article of manufacture.” Furthermore the claim is defined by the patent drawing. It would seem hard to argue that a design patent was ever intended to apply to a “virtual” object, much less a software package with no appearance in common with the patented design, although 271(b) inducement of infringement might be asserted?

  5. 5

    The insignia are often removed from cars in film; Herbie the Love Bug has no VW badges etc.

    When plastic model manufacturers want to model a vehicle available to the public, do they have to pay a license to the manufacturer to design and tool their model for sale to the public? I agree there is no cognizable difference between a digital 3D model and a digital photograph. This question is not far removed from modelling business processes (or anything else) where the item of value is some form of information, and is surely not limited to copyright.

    The relationship between information and IP in the Information Age is a central problem.

    1. 5.1

      The insignia are often removed from cars in film; Herbie the Love Bug has no VW badges etc.


      And other times (think product placement) vendors pay to have their products (and insignia) in films.

      I don’t think your “lead-in” makes the point that you think that it makes.

  6. 4

    Interestingly, this is very similar to the subject of the INTA Saul Lefkowitz moot court competition in 2011: link to
    The question there went a little further into rights of publicity, but still involved a trademark dispute between manufacturers of a virtual car and an identical “real” car.

  7. 3

    Strictly from the view of trademark law what is the difference between

    1. a 3D model file, (whether artist created or scanned from physical reality) used by a CPU and graphics card to display a BMW on a screen, i.e. which presents an image of the BMW to a viewer on a 2D surface; and

    2. a 2D graphical file e.g. JPEG, BMP, etc. (whether artist drawn or a photograph of a read BMW) used by a CPU and graphics card to display a BMW on a screen, i.e. which presents an image of the BMW to a viewer on a 2D surface.

    What would justify differential treatment of the products of photographers and artists if the processes they employ are the same and the end result of the media are the same, and essentially only the format (and possibly the amount and level of detail) of the media is different?

    1. 3.2

      …attempt at a “naked” trademark as opposed to a mark with a good?

      Art – by itself – seems out of context for “strictly from the view of trademark law.”

  8. 2

    We have our resident naysayers who will not likely accept the proposition of:

    In a digital world, manufacturing will increasingly be done, if at all, by individuals with 3D printers.

    As now the power of a person’s phone has extended past the “no one would want a personal computer in their home” mindset, it is not difficult to see that IP enforcement is going to face a similar quantum change as regards digital goods (and not just in the copyright realm).

    1. 2.1

      IP enforcement (and its laws via the Supreme Court) can’t keep up with technology and is (or are) in the stone ages. Every company I work for is moving things to the cloud, where you can simply assign processors, memories, networking, etc. to build virtual computers/servers/telecommunication base stations that work on and provide answers to tasks or help communication. Talk about “abstract”! There’s no way the court system is ready to handle this.

    1. 1.1

      If it is a faithful representation of the product bearing its mark …. not likely.

      Now if the BMW emblem was placed on, for example, a Pinto an Edsel or a Fiero…

    2. 1.2

      There is no way this is not actionable in some way


      That’s surely what the huffing puffing know-nothing at BMW told the legal department.

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