Birkins, MetaBirkins, and more!

Hermès is a luxury brand known across the world for producing exclusive and highly sought-after designer items, the most popular of which is the Birkin bag. This gorgeously designed bag is poetry in leather. With every new release, Hermès's clients fall asleep dreaming that their name will be next on the waitlist to purchase the iconic status symbol. It is exactly this cycle of design and desire that artist Mason Rothschild (Sonny Estival) claimed to be commenting on artistically with his NFT depictions of the bag. In February 2023, Hermès brought and won a trademark case against him. The IP case quickly became influential as the weeklong trial concluded with a strong precedent-setting verdict. In today's post, The Kayla Konnection will break down the facts, the ruling, and the IP implications of this highly popularized case.

The Facts:

• Mr. Rothschild produced and released a collection of 100 NFTs which were related to images of Metaverse bags in a similar design to the Hermès Birkin Bag.

• Mr. Rothschild began selling this NFT collection in Miami at the holiday season Art Basel Fair in December of 2021.

• Within one (1) month, Mr. Rothschild had traded over $1 million worth of NFTs relating to his MetaBirkin design.

• Mr. Rothschild, according to court transcripts and Reuters, stated that his NFT collection of MetaBirkin's were solely "an absurdist statement on luxury goods" and therefore was permissible given the First Amendment of the United States Constitution.

• Hermès claimed in the trial that the release of Mr. Rothschild's impeded their plans for a NFT production of Birkin Bags and other items within their designer line.

• Hermès also claimed that the MetaBirkin was infringing upon their trademark rights, specifically regarding the principle we discussed over the past few weeks here on TKK, market confusion when examining the LAPP test for U.S. Trademark statutes (Lanham Act).

The Ruling:

After one week of trial in Manhattan, the Jury ruled in favor of Hermès, awarding the brand $133,000 in damages, along with a world of precedent for future NFT, artist, and luxury brand digital reproduction trademark cases in U.S. and international courts.

The Impact:

If Mr. Rothschild had produced and sold his artwork with the same level of detail, with the same labeling, but out of leather, metal, and physical materials instead of digital ones, the product would clearly be evaluated and determined to be at worst a forgery, at best, a product with a high enough degree of market confusion for legal action equivalent to this case study. It is through this framework we can understand the ruling in a clearer light.

Regarding intellectual property in the digital age, this case laid further framework when it comes to protecting brands' rights to their work, not just physically, but also digitally. Individuals and artists may comment that this case and ruling stifle creative freedoms. Many may argue that Mr. Rothschild beat Hermès to the punch, producing the design before they could launch their intended NFTs. However, when a design and style are copyrighted, it becomes legally the property of the person or corporation who made the filing. This case shows that those protections extend into the digital fashion sphere as well.

As always, follow TKK to stay up to date, and reach out with further questions and comments.

Happy Friday!

Kayla

Instagram: @Kayla_Konnection

Pinterest: @kaylakonnection

LinkedIn: McKayla-McCloskey

Gmail: thekaylakonnection@gmail.com

Resources:

Hermès International v. Rothschild, U.S. District Court for the Southern District of New York, No. 1:22-cv-00384

Hermes wins U.S. trademark trial over 'MetaBirkin' NFTs (REUTERS)

Hermès Wins Case Against Artist Who Sold NFTs of Birkin Bags (WSJ)