IP Licensing and the Metaverse: Practical Considerations and Key Provisions for Agreements
Implications for the Physical World and Mitigating Risks in the Metaverse

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, September 12, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide counsel on licensing IP and the metaverse. The panel will discuss the practical considerations and critical provisions of licensing agreements for the physical world and metaverse contracts. The panel will also examine metaverse implications for physical world contracts and mitigating risks with licensing.
Faculty

Mr. Emmi is a partner and leader in the Technology Transactions practice within Reed Smith’s Global Corporate Group. He has an electrical engineering and intellectual property background, and had worked in the computer science industry prior to his career in the legal services industry. Mr. Emmi has extensive experience advising corporate clients regarding tech transactions, including mergers, acquisitions, spinoffs, and complex IP transactional matters, in each case in the intellectual property, information technology, cyber security and privacy practice areas. He has provided counsel on numerous intellectual property portfolio and patent prosecution matters. Mr. Emmi also has extensive experience litigating complex IP matters, with a focus on patent litigation involving technology in the electrical engineering arts.

Ms. Kershner works in trademark law, including prosecution, enforcement, and litigation, bringing a holistic perspective to solving her clients’ business problems. She counsels on strategy, prosecution, and enforcement efforts for global trademark portfolios, as well as handling disputes before the Trademark Trial and Appeal Board and litigating in Federal Court. Ms. Kershner is also active in the firm’s pro bono practice, where she has argued successfully to obtain withholding from removal for an HIV-positive client in Immigration Court. Ms. Kershner worked in IP litigation for technology companies with Russo & Hale LLP. She also has direct experience working in marketing for several Silicon Valley startup companies.
Description
The metaverse is shared interactive and collaborative virtual 3D worlds. People can work and play in the metaverse. For example, a person can work, attending virtual meetings. They can participate in live events, such as concerts, and purchase merchandise with cryptocurrency. After buying the merchandise, they can wear or use it and then lend it to a friend in the metaverse. This example requires assets to be compatible and transferable in the metaverse.
Licenses are typically granted based on territory, whether regional, national, or global. Does a global license include the metaverse? Do carveouts need to be created to fit the metaverse? Or, are separate licenses required? Licenses are also often limited to a particular service, device, or use. Because of the nature of the metaverse, licensees need to have more flexibility to facilitate development and interaction. A licensee will need the grant of rights to be broad enough to adapt to the evolving environment of the metaverse without repeatedly needing to amend the license.
Licensing includes a certain level of unavoidable risk in both the physical world and the metaverse, but licensors can anticipate and evaluate the risks and reduce the likelihood of problems.
Listen as our authoritative panel of IP attorneys examines licensing IP and the metaverse. The panel will discuss the practical considerations and key provisions of the licensing agreement for the physical world and the metaverse contracts. The panel will address the rights granted, territory, usage tracking, and compensation, among other issues. The panel will also examine metaverse implications for physical world contracts and mitigating risks with licensing.
Outline
- What is the metaverse
- Practical considerations of the licensing agreement
- Physical world contracts
- Metaverse contracts
- License vs. ownership
- Establishing virtual rights
- Key provisions
- Rights granted
- Territory
- Usage tracking
- Compensation
- Infringement
- Implications of the metaverse on existing physical world contracts
- Mitigating the risk associated with licensing in the metaverse
- Enforcement and quality control
- User generated content
- Fair use
Benefits
The panel will review these and other key issues:
- What is the key consideration when licensing IP in the metaverse?
- What implications could licensing agreements in the metaverse have for physical world contracts and brands?
- What steps can counsel take to mitigate the risks of licensing IP in the metaverse?
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