Trade Dress Rehearsal: Becoming Your Own Fashion Police

Trade Dress Rehearsal: Becoming Your Own Fashion Police

Trade Dress Rehearsal: Becoming Your Own Fashion Police

1000 648 Yusuke Hisashi

As the metaverse and other virtual worlds edge toward interoperability and user immersion, new complexities surrounding intellectual property protections have emerged. In particular, industrial design rights and trade dress have become pivotal forms of IP that lawmakers aim to adapt for virtual goods and experiences. Industrial design refers to the ornamental, aesthetic aspects of an object or article of clothing, including its shape, configuration, color patterns, and styling. Trade dress constitutes the distinctive packaging, signage, symbols, or designs associated with a product that identify its source. Both serve critical roles in real-world commerce by securing exclusive rights to creators’ novel designs and branding from copycats aiming to confuse consumers or freeride off creative investments.

The ballooning popularity of digital assets and virtual interactions raises pressing questions about how, if at all these protections apply in the metaverse. As spending soars on digital fashion, video game skins, virtual real estate, augmented reality filters, and more, the value of virtual IP continues to expand rapidly. Market forecasts suggest the metaverse economy could surpass $800 billion by the end of the year. But without clarity on design rights in these digital environments, creators lose incentives, face rampant clones devaluing their work, and struggle to recoup investments into innovative designs.

Issues such as rights upon first disclosure in virtual worlds, registering dynamic digital assets as protected designs, applying real-world laws to virtual goods, and handling cross-border IP disputes on global platforms are at the crux of the challenge. For instance, some jurisdictions only recognize design rights upon formal registration and review – yet virtual items like skins and digital garments often debut immediately in metaverse spaces before any application. Do copies that proliferate in the interim still constitute infringement? Are augmented reality sneakers or virtual fashion items subject to the same design protections as physical shoes and clothing? Who holds liability for knock-off NFT profiles replicating a brand’s trade dress? How are damages calculated for copycat virtual architectures? As virtual worlds enable seamless, real-time global access, choice-of-law and venue issues also confound enforcement.

Navigating these issues in court forces judges to apply analog-era IP statutes to rapidly evolving digital environments. Some experts argue that altered orientations may be necessary for Web3 spaces emphasizing open toolkits and collaborative remix cultures. Nonetheless, establishing balanced IP guardrails remains essential to stimulate continued creativity, trust, and growth across virtual platforms. Getting IP policy right in virtual worlds represents massive economic stakes for early innovators and adopters over the coming years.

First Disclosure

First disclosure refers to the initial unveiling of information, ideas, or inventions to the public rather than maintaining them as trade secrets, and poses particularly complex challenges at the intersection of intellectual property laws and emerging technologies like the metaverse. This public revelation is a key factor in determining whether creators can patent those concepts, as published ideas no longer meet the “novelty” most patent-granting agencies require.

In virtual spaces like the metaverse that instantly spread content globally, issues around the timing and location of first disclosures grow ever more complex. If a company debuts an innovative industrial design for a virtual product in a metaverse platform before formally registering it, unauthorized copies could proliferate rapidly. If that first virtual display counts legally as public disclosure, the developer may forfeit the ability to register the design. This could undermine incentives for developing creative virtual goods. Further muddying the water, not all jurisdictions even recognize metaverse activities as constituting public disclosures in the first place when adjudicating patents – legally, virtual worlds remain uncharted territory.

These conflicts highlight the need for balanced intellectual property policies that acknowledge the nuances of protecting rights in digital environments. While excessively rigid application and extension of analog-era laws could undermine participation and creativity by essentially eliminating trade secrecy in open, global metaverse platforms, abandoning protections entirely risks disincentivizing investments into pushing virtual frontiers forward. Nuanced solutions, like temporary secrecy periods before disclosure requirements kick in, may help balance interests. Furthermore, recognizing first disclosures within walled-garden virtual spaces differently from public platforms could incentivize developers.

Office Practice 

The blurring of traditional delineations between physical and digital environments exerts pressure on intellectual property regulators to adapt filing and protection protocols accordingly. Recently, this challenge emerged around design and trademark registrations when the United States Patent and Trademark Office rejected proposed marks for “Gucci” and “Prada” virtual goods. Both November 2021 applications aimed to secure exclusive branding usage of the iconic fashion house names within metaverse marketplaces and experiences. However, citing likely consumer confusion and existing live trademarks registered by the brands, the USPTO ruled against approving these applications.

This precedent indicates that examiners aim to uphold consistency around marks reaching famed status in the real world – rejecting attempts to effectively re-register such well-known brands for virtual analog use. The decisions suggest potential cracks down on bad faith efforts to squat on trademarks through metaverse filings hoping to leech off brand equity or extort companies defending their interests. However, nuances abound. For instance, if a virtual sneaker design itself sufficiently differs from a company’s physical offerings while incorporating brand elements in good faith creative contexts, usage questions could become more debatable.

Nonetheless, these office actions reaffirm the USPTO’s commitment to protecting owners who have already secured real-world rights, including several who have since filed metaverse-specific extensions. But when it comes to design protections, uncertainties around registering virtual goods still loom large. Unlike trademarks tethered to brand names and symbols, assessing ornamental novelty and aesthetic differentiation for items like digital fashion remain open frontiers. With no established visual corpus or case law precedent on virtual designs, applying physical world metrics poses challenges and raises calls for revamped filing protocols attuned to digital mediums.

As pioneering creators continue pushing design innovation along virtual frontiers, ensuring balanced protections to safeguard their investments while allowing creative remixing will grow increasingly pivotal. Just as Web 2.0’s advent necessitated rethinking IP for participative internet eras, metaverse worlds blending digital and physical experience call for measured evolution within registration systems lest uncertainty unwittingly stifles promise or progress.

Virtual Design Registration 

Uncertainty clouds the legal status of registered industrial designs in these virtual spaces. A key tension emerges from the broad protections design rights enable in some jurisdictions relative to trademarks tied to specific products. For instance, many countries’ design registration frameworks recognize claims spanning potential visual analogs across multiple product categories, beyond just those initially filed for. This fluidity aims to secure protections from iterative copycat iterations exploiting loopholes in classifications.

However, the openness also confounds applications to emergent virtual use cases like digital fashion, VR architecture, video game asset marketplaces, and mixed reality interfaces. If a company registers a shoe design, does that cover copying its stylistic elements for a virtual sneaker model? What about derivative works like avatar accessories that are inspired by but do not exactly replicate existing IP? Can UI layouts fall under design law protections?

Unlike trademarks directly referencing brand names, assessing ornamental overlaps poses challenges. With no case law precedent established, the debate remains open over whether design rights cover these virtual depictions legally, especially under US law. Other jurisdictions like the EU have issued some IP guidance on balancing interests in digital contexts, including protections for creative industries. However, global coherence remains lacking.

These gaps force creators to either limit virtual world participation given infringement risks or double down on rapid iteration themselves to stay ahead of counterfeiters. Both outcomes undermine sustainable cultures of creativity. Filing adapted specifically for UI interfaces, 3D model ornamental assessments, and moderated derivative work exclusions could help ease tensions.

Conclusion

As virtual worlds like the metaverse continue expanding, the challenges of policing infringements of ornamental design rights in ambient digital environments will intensify. Unlike trademarks centered on words and symbols, assessing aesthetic overlaps on virtual goods poses deeply complex technical and legal hurdles. With no established case law precedent or oversight mechanisms tailored to digital contexts, enforcement gaps abound for creators hoping to protect investments in virtual offerings like digital fashion, NFT game assets, and mixed reality architectures.

These gaps underscore why comprehensive intellectual property strategies remain vital for businesses building across blended virtual frontiers. While design registrations mark an important starting point, thoughtful combinations of trademarks, patents, and copyright safeguards calibrated holistically offer more robust coverage given legal uncertainties that persist. For smaller entities especially, expert guidance helps navigate tensions on issues like first disclosures, filing protocols, enforcement jurisdictions, liability allocation, and balancing protections with permissions for collaborative downstream remixing.

As with any emerging technology that innovates faster than policies can respond, some degree of risk is inevitable. But the burgeoning creative promise of open, interoperable virtual worldbuilding also demands good faith on all sides – incumbents and startups alike – to move collectively toward sustainable equilibrium between ethical community participation and rewarding trailblazers. Collaboration with regulators around designing adaptable but clear oversight guardrails will prove essential.


Gamma Law is a San Francisco-based Web3 firm supporting select clients in complex and cutting-edge business sectors. We provide our clients with the legal counsel and representation they need to succeed in dynamic business environments, push the boundaries of innovation, and achieve their business objectives, both in the U.S. and internationally. Contact us today to discuss your business needs.

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Yusuke Hisashi

All stories by: Yusuke Hisashi

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