From Gamers to the Runway: Brand Protection for Digital Fashion

AuthorLaura Ganoza, Ashley Koley
Pages16-62
Published in Landslide, Volume 14, Number 3, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
16
Image: Getty Images
Published in Landslide, Volume 14, Number 3, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
16
Published in Landslide, Volume 14, Number 3, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
17
From Gamers
to the Runway
Brand Protection for Digital Fashion
Life, whether we like it or not, is more digital than ever. The
global pandemic caused many to connect with others predom-
inantly through social media, Zoom, and online gaming. After
two years of working from home and attending virtual school,
conferences, and Zoom weddings, acquiring the latest fashion
was not high on most people’s to-do lists. Further, in recent years,
consumers have also become more conscious of global warming
and the environmental impact the fashion industry has on our
planet.
1
As a result, instead of amassing more clothing in their
closets, many consumers are spending money on gaming and
digital fashion. Indeed, the global gaming industry’s net worth
has already surpassed the lm industry, and it is predicted to
keep growing and exceed $200 billion by 2023.2 Moreover, with
the desire to acquire sustainable fashion and reduce the carbon
footprint left by their favorite designer’s goods, many consumers
are moving away from a wear-once, fast fashion mindset. Enter
digital fashion.
Digital fashion has existed as long as many video games have
been entertaining the masses. For example, The Sims, World of
Warcraft, Overwatch, and Fortnite are all games that allow the
player to spend several hours and sometimes hundreds in real
dollars customizing skins or outts from the in-game shop before
embarking on a virtual quest. Animal Crossing and Roblox are
other examples of video games that allow the player to purchase
sweaters, crowns, dresses, and accessories with the in-game
currency “bells” or “robux,” respectively.3 In all of these games,
certain skins or articles of digital clothing can signify status and
strength while demanding respect from other players. Luxury
fashion brands have pounced on the opportunity to feature their
designs in video games. For example, Gucci (Roblox, The Sims),
Marc Jacobs (Animal Crossing), Valentino (Animal Crossing), and
Burberry (Blankos) are a few brands that are taking advantage of
a new way to market their designs. Louis Vuitton went the extra
step and created its own video game: Louis the Game.4
But the nature and scope of digital fashion has broadened
immensely since The Sims. Today, a customer can shop three-
dimensional (3D) designs online at a digital fashion house, submit
a photo of themself, and pay anywhere from $5 up to $10,000 to
receive a customized garment that does not physically exist but is
digitally superimposed onto the submitted image. The customer
can then sport the latest fashions through a two-dimensional
Laura Ganoza is a partner at Foley & Lardner in Miami, Florida,
where she chairs the f‌irm’s Miami Oce Litigation Practice;
she is also cochair of the f‌irm’s Fashion Apparel & Beauty
Industry Team. In addition to assisting clients with clearing,
registering, and enforcing trademarks and copyrights, her
practice includes litigating a wide range of intellectual
property matters involving copyright, trademark, and patent
infringement and trade secret misappropriation. She can be
reached at lganoza@foley.com. Ashley Koley is an associate
at Foley & Lardner in Los Angeles, California, where her
practice primarily consists of intellectual property litigation
and counseling, including copyright, trademark, patent
infringement, trade secret misappropriation, and entertainment
matters. She can be reached at akoley@foley.com.
BY LAURA GANOZA AND ASHLEY KOLEY
Published in Landslide, Volume 14, Number 3, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
17
Published in Landslide, Volume 14, Number 3, 2022. © 2022 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
18
(2D) post on Instagram without having ever touched their new
digital closet addition. Other digital fashion brands, such as
RTFKT (pronounced “artifact”), sell digital sneakers authenti-
cated through non-fungible tokens (NFTs) on the blockchain,
where the purchaser has the sole right to unlock a wearable digi-
tal version in the form of a lter.5 Like video game collaborations,
luxury fashion brands have similarly collaborated with rising
digital fashion companies, such as The Fabricant and DressX, as
a way to sell sustainable nontangible fashion to their consumers
and keep up with the digital fashion revolution.
Not unlike any other kind of new technology, these collab-
orations present new legal concerns for designers and brands
that wish to include digital pieces in this season’s collection.
Fashion designers and brands must disclose valuable intellectual
property (IP) and condential information through clothing
patterns, accessory designs, or other sample articles when they
collaborate with digital designers. Collaborators must be clear
about who owns what IP and the risks that may arise out of
such collaborations.
IP Protection for Tangible Fashion Designs vs.
Digital Fashion Designs
In the United States, clothing designs are generally difcult to
protect. The day after the Academy Awards ceremony, for example,
fashionistas can buy look-alike dresses worn on the red carpet the
night before, and brands are often left with no remedy. There are,
however, still several types of IP protection that are available for
tangible fashion articles. Although the types of IP protection avail-
able for digital fashion designs will differ in nature and scope from
tangible fashion designs, there is plenty of IP protection available
for digital designs too.
Copyright
Under the U.S. Copyright Act, clothing is considered a useful
article that is inherently functional and not protectable under
copyright law.
6
However, in Star Athletica, L.L.C. v. Varsity
Brands, Inc., the U.S. Supreme Court held that a feature of a
design of a useful article is eligible for copyright protection if it
can be perceived as a 2D or 3D work of art and would qualify
as a pictorial, graphic, or sculptural work separately from the
useful article either on its own or on another tangible medium.7
Pursuant to this ruling, patterns and graphics incorporated into a
design can be protected, as well as any sculptural piece attached
to the clothing. Still, copyright law will not protect the design
of the clothing itself.
As for digital designs in video games, since 1982, “[i]t is also
unquestionable that video games in general are entitled to copy-
right protections as audiovisual works.”8 Copyright protection
is available for both the source code for the program and the
graphical elements of video games.9 However, “[i]t is an axiom of
copyright law that the protection granted to a copyrightable work
extends only to the particular expression of an idea and never to
the idea itself.”10 Thus, although a digital dress may be featured
in a video game and could be entitled to copyright protection, not
all digital dress designs will be protectable if the expression of the
digital design does not extend beyond the simple idea of a dress.
As the Ninth Circuit stated in 1977:
When idea and expression coincide, there will be protection
against nothing other than identical copying of the work. . . .
[T]he scope of copyright protection increases with the extent
expression differs from the idea. . . . The idea and the expres-
sion will coincide when the expression provides nothing new
or additional over the idea.11
Thus, whether a digital fashion article is featured in a video
game or being sold off the digital rack by a digital fashion company,
the expression must be original and extend beyond a mere idea.
Moreover, merely because the digital design in 2D or 3D
appears to be in the shape of a useful article is not a bar from copy-
right protection. Specically, the Supreme Court in Star Athletica
addressed this issue squarely in 2017 without even likely realizing
its applicability to digital fashion.
12
In Star Athletica, the defendant
attempted to argue that designs on a cheerleader’s uniform were
not protectable by copyright because even when the designs were
imagined separately from the useful article (cheerleading uniform),
the design retained the outline of the cheerleading uniform.13 The
Court rejected this argument and stated that “this is not a bar to
copyright. Just as two-dimensional ne art correlates to the shape
of the canvas on which it is painted, two-dimensional applied art
correlates to the contours of the article on which it is applied.”14
Therefore, the “useful article” problem that bars protection of
most aspects of physical fashion designs is not an issue for digital
fashion, which is a 2D or 3D design, so long as it qualies as a
pictorial or graphic work under the Copyright Act. The distinc-
tion means that, assuming a digital dress design is original and has
some minimum degree of creativity beyond a familiar dress design,
it could potentially be easier to obtain IP protection for a digital
design rather than its tangible counterpart by way of avoiding the
functionality hurdle.
Trade Dress
Trade dress protects the overall look and feel of a product’s design
or packaging if it has acquired a distinctiveness that serves to iden-
tify the product or packaging with its manufacturer or source. Like
copyright law, trade dress law also excludes functional features,
making it difcult for brands to obtain trade dress protection for
physical designs.15 That is because a product feature is functional
if it “is essential to the use or purpose of the article or if it affects
the cost or quality of an article.”16 In other words, “if the prod-
uct feature is ‘the reason the device works,’ then the feature is
functional. The availability of alternative designs is irrelevant.17
However, trade dress protection is not out of reach for some
distinctive design features. For example, the Levi’s red tab, Chris-
tian Louboutin’s red sole, Burberry’s plaid designs, and the Hermès
Birkin bag all have trade dress protection. These brands were able
to show that the design features they sought to protect served no
functional purpose and that the features are distinctive enough to
cause the public to believe they originate from one source.
Similar to copyright protection available for digital designs,
there is no functionality hurdle that is required for trade dress
protection of a digital fashion article. However, trade dress protec-
tion requires secondary meaning, which can sometimes take years
of building source identifying distinction.18 In the world of fash-
ion, whether tangible or digital, trends move quickly, and for most

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