Luxury brand Hermès has won a trademark jury trial in New York against artist Mason Rothschild. The dispute was over Rothschild’s NFT collection MetaBirkins, which are sold on the marketplace SuperRare, consisting of links to images of furry Birkin bags. The jury awarded Hermès $133,000 USD in damages for trademark infringement, dilution and cybersquatting.
I do not claim to know anything about fashion (I will wear anything as long as it’s blue), but I’ve have been informed that Birkin bags are extremely prestigious and sought after, they get their name from actress Jane Birkin, they’re famous for their iconic shape and the presence of a lock, and they’re designed to stay always closed.
The MetaBirkin collection was created in December 2021, and it is a limited issue of 100 tokens, each consisting of a link to a jpg of a bag. Most of the tokens have been delisted, but there are a few still up for sale. From a technical perspective, the NFTs will remain online regardless of any decision, the smart contract is in the Ethereum blockchain here, and each of the token IDs is conveniently numbered from 1 to 100. So for example, MetaBirkin number 14 can be found here (you need Brave or another browser with IPFS capabilities to view the file).
Hermès didn’t take kindly to this development, it owns the trademark and trade-dress for their Birkin range, and sued for trademark infringement, false designation of origin, cybersquatting, unfair competition, and dilution, amongst other things. In their complaint they argued:
“Defendant’s conduct is intended to exploit the goodwill and reputation associated
with the BIRKIN Mark.
122. Defendant’s activities as aforesaid create the false and misleading impression that
Defendant is sanctioned, assigned or authorized by Hermès to use the BIRKIN Mark to advertise,
manufacture, distribute, appraise, offer for sale or sell infringing products bearing the BIRKIN Mark
when Defendant is not so authorized.”
From the start Rothschild tried to argue that the MetaBirkin collection was an art project, more specifically a work of artistic expression, and therefore should fall under free speech. In short, works of art can sometimes infringe a brand if they are predominantly made to convey some form of artistic message. Rothschild argued that this was a commentary on fur, arguing that it was evident that these works were not endorsed by Hermès. Moreover, he tried repeatedly to make the analogy with Andy Warhol and his use of trademarks such as Campbell’s soup, he contested that he has “the right to make and sell art that depicts Birkin bags, just as it gave Andy Warhol the right to make and sell art depicting Campbell’s soup cans.”
The problem for Rothschild is that this argument would be stronger if the NFT collection wasn’t evidently a commercial endeavour, and never really looked like any for of art project. Sure, a lot of art is commercial, but it seems evident here that MetaBirkins were trying to play on the Birkin brand in manners that could be considered merely commercial. A lot of the advertising of the collection played on being something new, “not your mother’s Birkin” was a common tagline.
I can’t comment in detail on the US trademark law minutiae of the case, I’m not a trademark expert by any stretch of the imagination, although to me the brand dilution argument is definitely quite strong. It was always evident that Rothschild was banking on the Birkin’s reputation as an iconic fashion product, and I thought that Hèrmes had a stronger argument.
One thing that I would like to note from the wider perspective of NFT litigation, is that it is becoming clear that NFTs are not about copyright at all, and that most of the litigation will take place in trademark. The issue is, as I have explained elsewhere, that when you boil it down to its basics, an NFT is just a link to an image, and therefore the application of copyright law is limited. It is also clear that a lot of NFT projects may not even be protected by copyright (I’m looking at you Bored Apes), which explains why the litigation taking place at the moment is about trademarks and not copyright.
Rothschild is likely to appeal, so this is probably not over yet.
I do have one question, who would buy a link to the jpg of a furry bag? NFTs will never cease to amaze.
0 Comments