By now, many have probably heard of Metaverse – a network of digital environments where individuals can interact with and purchase avatars of other objects. The metaverse is undoubtedly one of the hottest topics in recent years. Therefore, it is not surprising that fashion brands are interested in the potential of Metavas, in the early stages.
One of the reasons fashion brands are paying attention to Metavas is, presumably, because of the creative freedoms it allows. Paradoxically, innovations are not limited by supply chain problems or travel delays – they can simply produce a product that is instantly and freely accessible to consumers. But with that freedom comes an easy way for counterfeiters to infringe on brands’ valuable intellectual property (IP).
For example, Roblox users can buy authentic virtual clothes and accessories from Gucci and Ralph Lauren, but there are also countless unauthorized products available for purchase, including Cartier love bracelets, super hoodies and Chanel blazers.
A number of fashion brands are also starting to offer non-fungible tokens (NFTs), a type of digital asset that can be used to represent artwork, videos, and goods such as digital (or physical) clothing. For example, Gucci, Rimowa, Dolce & Gabbana, Givenchy, and others have launched NFTs to engage with the digital community. On the other hand, NFTs have provided a new medium for copies. The most high-profile example is the MetaBirkins NFTs—colorful, hyper-realistic and furry images of Hermes’ famous Birkin bag—which have been the subject of copyright infringement, tampering and cybersquatting by Hermes. MetaBirkins creator Mason Rothschild recently denied Hermes’ lawsuit, arguing that his use of “MetaBirkins” is protected by artistic expression. Rogers Trial: Use of a third-party trademark in conjunction with a creative work hereunder does not infringe unless (1) it has no artistic merit or (2) it is clearly misleading. US District Court for the Southern District of New York (SDNY) NFTs b Rogers Trial — until then an open question — denied Rothschild’s motion to dismiss because Hermes’ amended complaint sufficiently alleged that its use of “MetaBirkins” was clearly misleading.
Furthermore, courts have yet to provide meaningful guidance on what constitutes infringement or non-compliance in virtual worlds. In addition, the SDNY proposed a motion to dismiss Rothschild In what was said That’s what he said. Rogers For example, it may not apply to a wearable Birkin handbag because the name “MetaBirkins” is used with a non-descriptive commercial product. Such virtual wallets may be prescribed for other fair use protections, but given the open questions and risks associated with derivatives and other virtual offerings, brands should consider trademark documents that clearly cover digital products and NFTs, which could improve enforceability. efforts and expansion plans to Metavas. First, trademark registration gives evidence of the owner’s exclusive rights to the registered mark. As a result, a registration covering NFTs and virtual goods will enhance brand enforcement, anti-counterfeiting and takedown efforts against infringing virtual goods. For example, many exchange platforms and NFT marketplaces have takedown procedures, under which proof of copyright infringement can be removed to remove infringing virtual goods – the latter can be established by trademark registration covering related goods or simply. Services.
The unauthorized designer products on Roblox reflect consumer demand for product virtual goods in the metaverse. In turn, brands can satisfy this demand and avoid infringers by introducing their own virtual goods and NFTs. Trademark registrations can be used when entering into licensing arrangements with NFT minters, Metaverse platforms and other operators in the virtual world.
As seen in the 2,600 trademark applications for virtual products filed between January and May 2022 alone, many popular brands have taken the spotlight. The same is true for clothing and footwear products. Starting in October 2021, Nike was an early mover when it filed to register many of its brands for virtual goods and services, including NIKE, JUST DO IT and the iconic Nike Swoosh logo, among others. Other famous brands like Valentino and Saint Laurent soon followed. Interestingly, many top fashion retailers have even applied to register their brands for virtual real estate services—perhaps in anticipation of Metaverse’s omnichannel capabilities.
to be taken
Beyond trademark registrations, fashion brands need to monitor the popular Metaverse and NFT platforms for unauthorized use of their IP. Many infringements can be resolved through “informal” enforcement actions such as letters of demand, business-to-business discussions, and/or takedown requests—but, as mentioned, trademark registrations for virtual goods increase efforts. Brand owners should use trusted IP consultants to develop registration, monitoring and enforcement plans to combat current and future infringements in the digital world.
The authors would like to acknowledge summer associate Megan Kilduff for her contributions to this revision.