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The fashion industry is transforming from analog to digital. This evolution came about due to the increasing demand for sustainability and the influence of the gaming industry. The COVID-19 pandemic accelerated the process by compelling the fashion industry to adjust to social distancing. While the use and sale of digital fashion creates a number of opportunities for fashion brands, it also opens the door to new disputes concerning the intellectual property rights attached to these digital products, especially design rights.
Section 1 | Introduction
EU traditional fashion items (i.e. tangible fashion items) can generally be protected by various intellectual property rights: copyright, trademarks and design rights.[1] While copyright and trademarks are ways of protecting brand names, logos, drawings and images, design rights protect the overall appearance of a product. For example, new designs of clothing or accessories, as well as decorative prints, qualify for design protection.
Due to the relatively low cost and the speed of the registration process, design rights are the perfect way to widely protect ever-changing traditional fashion items, but is this also the case for digital fashion?[2]
To give you a better understanding of what digital fashion is, we will first define this concept and provide insight into the various technologies fashion brands exploit today for using and selling (digital) fashion (section 2). We will then cover the protection of design rights for digital fashion and its challenges (Section 3). In the third section we will examine whether digital fashion can even be protected by design rights (point 3.1.), and to that extent, whether the design filing procedure is still up-to-date (point 3.2.) and if the Locarno Classification has sufficiently adapted to this digitalization (point 3.3.). In our conclusion, we make some recommendations to the applicant of a community design and to the legislator (section 4).
Section 2 | Digital fashion and the way it is being used in the marketplace
What constitutes digital fashion, and how it should be defined has not been firmly established.[3] We will use the definition as found on Wikipedia being “the visual representation of clothing built by using computer technologies and 3D software”.[4]
Fashion brands have adopted different technologies to sell their digital fashion. More in particular these companies often use i) augmented reality dressing ii) computer-generated imagery, iii) NFT wearables and iv) virtual reality. Each of these technologies are explained below using real life examples.
- Augmented reality (AR) dressing is the layering of digital garments on the physical reality done through a smartphone or tablet.[5] This can take various forms such as AR showrooms, AR windows, AR mirrors and many more. GAP, for example, created an app where users can try on GAP clothing via AR anywhere they want, at home, at work, at the gym, etc.[6] Ray-Ban uses an AR mirror to help clients choose their perfect glasses.[7]
- Computer-generated imagery (CGI) or social wardrobe, originally used in the film industry, is the use of computer graphics, such as digital garments, to contribute to images in pictures and videos. The images may be static or animated.[8] In the fashion industry, the creation of CGI is done by companies such as Dressx, The Replicant and Ardrobe. Taking the idea one step further are CGI models such as Shudu Gram which is an influencer who does not exist in real life.[9] “She” has been featured in beauty campaigns for brands such as Fenty Beauty.[10]
- NFT wearables are digital garments minted as NFT on the blockchain. Dolce & Gabbana has created the Collezione Genesi, a NFT collection of 9 pieces including the impossible tiara.[11] You can also create these NFT wearables yourself by using the platform of The Fabricant, a Dutch decentralized fashion house who created the first digital garment – the Iridescence Dress – on the blockchain in 2019.[12] In short, the process of creating digital garments begins with fashion brands and designers dropping 3D master garments into the platform. Users can then customize these master garments with digital fabrics and accessories created especially for the platform. While it is digital-only clothing, just one version of each garment is made. Once complete, each piece is minted as an NFT. The user behind the completed item is credited as co-creators with the designer of the master garment.[13] The above three technologies can easily be combined. A digital garment, bought as an NFT on the blockchain, can, for instance, be accessed via an AR filter to try it on and, afterwards, can it be captured in a photo by computer-generated imagery.
- Virtual reality (VR) is a technology used to create a virtual world with which the user can interact. This world is viewed through the use of VR glasses, a VR headset or helmet. While dating back several decades, the technology advanced significantly in the past 10 years. In 2017, VR technology allowed visitors to the New York Fashion Week the opportunity to virtually attend the “Dreaming of Italy” event in Milan.[14]
We are now in an era where companies can easily combine all four of the above technologies, as provided in our earlier example. In June 2023, Apple launched its first VR headset, with their device combining a mix of AR and VR.[15]
Section 3 | Digital fashion and design rights
Digital content can easily be counterfeited and is susceptible to piracy. Therefore, it is logical fashion brands would want to protect their digital garments as much as possible. As design rights are the best suited intellectual property rights, we will dive into the following questions. Can digital garments be protected by design rights? (point 3.1.) What are the difficulties attached to the filing of design rights for digital fashion? (point 3.2.)
3.1. Can a digital garment be protected by design rights?
A design protects the overall appearance of the whole or a part of a product, which is determined by its characteristic features. These are in particular the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation.[16] So design protection requires a product, which is defined by the community design regulation as “any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”.[17]
Therefore, the question arises whether a digital garment is a “product” within the meaning of the community design regulation. Before we can answer this question positively, two hurdles need to be tackled:
- The first hurdle is the requirement of an “industrial or handicraft item”. It is clear that a digital garment is not made industrial or by handicraft. Nonetheless, the European Intellectual Property Office (EUIPO) currently accepts designs of screen displays and icons, graphic user interfaces and other kinds of visible elements of a computer program.[18] We believe, digital garments can be seen as falling under the last category of “other kinds of visual elements of a computer program”. Nevertheless, with the upcoming legislative reform, we hope changes will be made to the definition of what a product is. The legislator will, hopefully, integrate “physical or virtual, industrial or handicraft item” and make references to what a product can be such as graphic works.
- The second hurdle is the requirement that the item must be “intended to be assembled”. The intention of a fashion item is, however, not always to be assembled. In this regard, the Outfit-Of-ToDay (OOTD) trend is relevant. Influencers often order clothes for one picture on their social media account. Once returned the clothes will likely be thrown away[19]. Therefore, influencers more often rely on CGI for their social media pictures. In that case, they wear a digital garment for the picture without ever wearing it in real life. The digital garment was from the beginning never intended to be assembled. This criteria, however, is the least of our concerns, because the EUIPO will not examine “whether the product claimed is actually made or used, or can be made or used, in an industrial or handicraft manner”.[20]
We can, therefore, fairly say that a digital garment can be considered a product within the meaning of the community design regulation. This is confirmed by the recently in 2022 registered community design n° 009029275-0001 of NIKE Innovate C.V. for the below shoe:
3.2. What are the difficulties attached to the filing of design rights for digital fashion?
Now we know a digital garment is eligible for design protection, we can move on to the filing procedure. Firstly, the garment must be represented (point 2.1.).[21] Secondly, an applicant should indicate the type of product for which protection is sought by using a product indication of the Locarno Classification (point 3.2.2.).[22]
3.2.1. Representation requirements: outdated?
When filing for design protection, a number of representation requirements must be met. The purpose of this requirement is to disclose the features of the design for which protection is sought.
Unfortunately, these design representation requirements are outdated. The law limits us to represent a design by means of drawings, photographs and computer-made representations. But only seven static views are acceptable. Herein lies the problem, digital clothing is not always static. Here we can think of the Iridescence dress mentioned earlier under section 2. In addition to the static views, 3D computer-animated designs can be filed, but these are only for reference purposes. Furthermore, a description is allowed, but shall not be taken into account for determining the scope of protection.
Hence, a digital garment can be filed, but the limitations of these requirements make it very difficult for digital designs, in particular animated designs to be represented sufficiently. Therefore, we hope that the EUIPO will soon consider animated designs not only for reference purposes.
3.2.2. Product indication: which class(es) to choose?
Another requirement upon filing of design protection is that the design application must indicate the product(s) integrated in the Locarno Classification. The wording of it must clearly indicate the nature of the products and enable each product to be classified in only one class.[23] However, products that combine different elements so as to perform more than one function will be classified in as many classes and subclasses as the number of purposes served.[24]
However, we are of the opinion that “3D graphic designs” would be more appropriate than “graphic symbols for screen displays” to indicate digital garments, because digital fashion is the visual representation of clothing built by using computer technologies and 3D software. At the moment only “2D graphic designs” are included in class 32.00. The new 14th edition of the Locarno Classification, which came into force on January 1, 2023, has added “augmented reality graphical user interfaces [for screen display]” under 14-04 screen displays and icons. This subclassification includes those goods belonging to other classes. While a step in the right direction, we believe the update to the Locarno Classification does not go far enough to reach present-day classification reality. We had hoped that the legislator would add “3D graphic designs” to class 32.00. Unfortunately, we will have to wait a little bit longer.
Section 5 | Conclusion and recommendations
We can conclude that a digital garment can be a product within the meaning of the community design regulation and is therefore eligible for design protection.
When applying for protection, we have some recommendations for the applicant:
- Regarding the representation of the digital garment we recommend i) to use all 7 static views, ii) to add 3D computer animated designs when filing for an animated digital garment and iii) to include a description.
- Regarding the product indication we recommend to include class 02.00 articles of clothing and class 14.04 “graphic symbols for digital garments when used in a virtual environment” as well as “augmented reality graphical user interfaces [for screen display]”.
Although, the legislator still has a lot of work to do in order to be fully adapted to the digital area, more in particular digital fashion. We recommend the EUIPO i) to broaden the definition of a product, ii) to ease the representation criteria and iii) to amend the Locarno Classification by adding 3D computer animated designs to class 32.00. We are eager to see how the EUIPO will further tackle this evolution in the fashion industry.