Digital Fashion and Trademarks: The Protection of Self-Expression in the Metaverse

In this new age, where one can pay for goods and services with digital currency and invest in digital assets that represent art, music, and collectibles, it is not surprising that a person can buy three-dimensional (3D) digital clothing. But what exactly is digital fashion, and how is it affecting trademark law?

Clothing at its most basic level has a purpose—it is utilitarian in nature. Fashion, on the other hand, is a form of expression. One could argue that fashion, too, has a purpose, but its purpose is to convey a message. In Ancient Egypt, Ancient Rome, and other ancient civilizations, fashion was used to convey the wearer’s status. Clothing, footwear, jewelry, makeup, hairstyles—all these elements of fashion were used to tell others how wealthy and important a person was and to (hopefully) look good and attractive in the process. For example, the privileged classes would wear expensive and colorful fabrics (and lots of them), whereas the poor would wear neutral colors made of serviceable and practical material they made themselves.

Virtual Expression

It stands to reason, then, that in today’s world, where people have started spending significant amounts of time exploring the metaverse, that they would similarly look for ways to express themselves and tell others they meet in the digital world who they are, where they come from, and what they like.

Enter digital fashion.

Digital fashion is, simply put, virtual 3D clothing and accessories. It exists only in the virtual world of 0s and 1s and is designed to be worn by digital avatars (a computer representation of a person in a computer-generated 3D world) or other digital representations of an individual, for example, an image of a person taken in the “real world” that is uploaded and altered to show the digital clothing being worn.

The world of online gaming is a good example of where one might encounter digital fashion. In a game like Fortnite, for example, in which players can cooperate to create new worlds and compete with other players to survive threats, players’ avatars can don the stylish fashions of real-world designers like Balenciaga, Moncler, and Ralph Lauren within the game (for a price, of course).

Interestingly, (for another price), digital fashion products may also be available simultaneously in real life (IRL). In Roblox, a global platform where users can create and share experiences in user-generated 3D worlds, users can choose digital apparel for their avatars from fashion and beauty brands, including GUCCI, BURBERRY, CAROLINA HERRERA, and TOMMY HILFIGER.  Outside this context, users can wear digital clothing by altering real-world images to replace the clothing in the pictures with digital clothing they have purchased. These types of services are offered by companies such as Replicant and DressX.

Popularity of Digital Fashion

Why would someone want to purchase clothing they can only wear in a digital image? As explained in the DressX vision statement, “the amount of clothing produced today is way greater than humanity needs.”  The Replicant website provides a more specific use case, noting that “[y]ou don’t have to buy a new physical garment if you only need another catchy Instagram post.”

In other words, instead of spending money on a real-world outfit to wear for one Instagram post, a social media influencer can simply purchase a digital outfit for the post, which purports to save real-world resources, while providing the user with exactly what they need—a new look for followers to enjoy. The website fails to mention, however, that instead of using some physical resources such as wool or cotton, digital fashion still requires energy to make the system function, as it also consumes real-world resources.

In contrast with conventional fashion, which relies on factories, physical fabrics, and textiles, digital fashion involves the visual representation of clothing that is created using computer technologies and 3D software, such as CLO 3D and Blender. Digital fashion is often touted as being inexpensive, and ecologically friendly, although this may be an exaggerated claim, and in any case unbounded by the constraints of the real world, such as gravity and manufacturing limitations. In creating digital attire, only their imagination limits designers. On the New Arrivals page of the DressX website, for example, consumers can choose from a Puffy Dress (“puffy” is an understatement), a colorful AiMorphosis Dress (an indescribable cocoon-like creation), and a purple Darpinyants Dress (an oversized pool flotation device comes to mind).

Other designs on the website include features such as wispy, gravity-defying ribbons, thin tendrils, and colorful flying feathers. The list of new designs and items will certainly grow in the future.

Like its real-world counterpart, digital fashion involves intellectual property (IP) that may be protectible, such as via trademark, copyright, design patent, and trade dress protection, wherever these are available.

Functional and Nonfunctional Design

In countries recognizing trade dress protection, trade dress protects the look and feel of a product’s design or packaging as long as the design or packaging serves as a source identifier. Famous examples include the red sole on CHRISTIAN LOUBOUTIN shoes, the red tab on LEVI’S jeans, and the look of the HERMÈS BIRKIN bag. Designs that are functional, however, may be barred from enjoying trade dress protection. While this may be a problem for real-world clothing and accessories, digital fashion is arguably much less functional and possibly not functional at all as a human being never actually wears it.

Like their real-world counterparts, however, digital fashion designs must still have acquired distinctiveness, enabling the designs to serve as source identifiers. For designs that are known in the physical world and are now rendered in the metaverse, acquired distinctiveness already exists—consumers already know the brands. For new designers, however, it will take time and money to achieve this type of consumer recognition.

In contrast with a product design or packaging, a trademark can include, for example, words, letters, drawings, symbols, sounds, colors, or fragrances that identify the source of a good or service. No stranger to the fashion industry, trademark law has provided valuable protection for numerous time-tested fashion brands. Unlike the ever-changing styles of dresses or the trendiness of the cut of a pair of pants, the power of a brand can remain strong and steady for as long as there is use of the trademark in commerce (and sometimes even longer).

Confusion in the Virtual World

As real-world brands move into the virtual world, it becomes easier to argue that encountering a trademark in a video game or other digital context is likely to cause consumer confusion, even if the mark at issue is only registered for real-world goods and services. Whether in the physical world or in the metaverse, consumers will recognize the use of a well-known fashion brand as identifying the source of the article.

Although the likelihood of confusion analysis may be shifting to favor fashion brands that expand into the metaverse, proactive steps can be taken to solidify trademark protection in the digital world, such as by registering brands in other international classes such as Class 9 (downloadable software) and Class 42 (non-downloadable software). Nevertheless, one should remember that the protection of fashion brands in the digital world may be easier even without additional registrations for those brands that are considered well-known or notorious trademarks.

In addition to trademark registration, the growth of digital fashion has spurred other trademark-related issues and considerations. For example, the creation of a digital fashion article necessarily entails the use of software. The use of such software is often made under license, and the license may have terms and conditions that give ownership of the IP that is created using the software to the license holder.

Outside Suppliers and Ownership

When the digital fashion brand itself creates a digital fashion article, the brand is the license holder; however, if the brand hires an outside designer, it may need to carefully specify, in advance, who owns the resulting products. Moreover, collaborations are common between digital fashion companies and software platforms. For example, the platform a user accesses to purchase and use the digital fashion article may be the one belonging to the video game company. Again, the ownership of trademarks and other IP rights may become more complicated in this situation as users purchase and apply digital fashion articles to their avatars within the digital platform. (See a study of the issues when only U.S. law is concerned.)

The issues become even more complicated when platforms or gaming sites are established under the laws of one country and the fashion brands involved are from another country having different laws.

Tests for Trademark Law

All in all, fashion is alive and well in the digital world, and, for some, digital fashion has opened up whole new avenues of creativity and self-expression. As longstanding fashion brands continue to explore the metaverse and new digital fashion brands arise, trademark law will be tested and will need to adapt, no doubt showing the world that trademark attorneys can be creative too.

Welcome to the brave new (digital) world!

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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