A luxury brand Hermès filed a trademark lawsuit against Mason Rothschild, the creator of MetaBirkins. The brand claims that Rothschild is selling counterfeit products and that the virtual recreations of the famous Birkin bags in the form of NFT art are a trademark infringement. We decided to delve deep into what exactly has happened and whether such case is one of many that are still to come.
Hermès vs MetaBirkins NFT Art
The NFTs were listed on Opensea in December and traded between 5 and 25 ETH. Now, NFT platforms such as OpenSea NFT and Rarible have delisted them, but one can still buy these NFTs on Looksrare, although the traded volume is very low there, which hints at low liquidity. Each of 100 unique NFTs has different prints from smileys to fragments of paintings by Leonardo Da Vinci or Vincent Van Gogh.
In the beginning of January, the company filed a complaint against the artist. Mason Rothschild, in turn, addressed Hermès, community, and Opensea with an open letter where the creator relies on the First Amendment, which “protects freedom of speech, the press, assembly, and the right to petition the Government for a redress of grievances”. The author of MetaBirkins NFTs says that the collection is art, which depicts his perception of the world and objects in it. Rothschild also claims that MetaBirkins is “commentary on fashion’s history of animal cruelty and its current embrace of fur-free initiatives and alternative textiles”.
Hermès believes that the artist rips off the company and just wants to get rich quickly, by adding ‘meta’ to the famous trademark name. Apart from claiming the damages, the french luxury brand also demands for all of the previously minted NFT artworks to be destroyed, and the website domain to be passed to Hermès.
This case is the first example of a brand taking legal action against the use of its trademark in the metaverse. There were numerous digital artists, who sell NFTs with logos of Burberry, Chanel, Louis Vuitton or Prada sold on Roblox, however, none of these companies sued the creators. Gucci, for example, had a similar case with Trevor Andrews, also known as GucciGhost, who was using the Gucci logo in his artworks without the company’s permission. Instead of filing a lawsuit, Gucci partnered with the artist and they plan to organize an exhibition together in Shanghai. This is the new normal of conventional brands turn into NFT stocks, which we have covered in greater detail in our detailed NFT stocks guide.
Can NFT art be considered a counterfeit?
Digital art NFTs are still a “wild wild west”, and there are no cases and no laws that would be actually regulating the industry. This makes it difficult to understand who is actually right in this situation and whether the NFT art by Mason Rothschild can be considered trademark infringement.
The NFT creator is confident that he has the right to create the NFT in the form of the Birkin bags and he also states that the name ‘MetaBirkins’ describes what the art depicts. This is what he stated in response to the lawsuit.
Jeff Trexler, associate director of Fordham University’s Fashion Law Institute also believes that the situation with cases like MetaBirkins is tricky. He says that in principle one can say that this is unauthorized use of the trademark, however, each trademark is usually registered under a particular category. ‘Birkin’ belongs to categories of leather handbags and leather goods, so the NFT artist may claim that the trademark wasn’t registered in a category of digital art or digital goods. Moreover, the creator of NFT art can say that there was a fair use of image because the bags are of a high cultural significance.
Another pillar that makes it difficult for Hermès to say that Rothschild Mason is ripping off the brand is that Hermès is not present on the NFT market. If the company was selling NFT goods under their name, then ‘MetaBirkins’ NFTs could be actually considered a counterfeit.
In 2021, the US Patent and Trademark Office issued a request for comment on design patent protection for images that “do not require a physical display screen or other tangible article to be viewable”. Depending on what the USPTO comments, we may see a totally new level of protection of designers in NFT crypto art industry.
Is NFT market regulation a reality?
NFT market is still very young and regulators can’t keep up with the developments in it. However, cases like these, create a need for laws that clarify what is actually allowed and what is a no go in the world of NFT crypto art.
Today, it depends solely on the brand whether they consider the NFT art creations like this to be additional marketing for them or whether it is a counterfeit. Hermès fashion house believes that the artist didn’t have the right to use their trademark, but the decision made by the regulators will become a foundation for further regulation of similar cases. Perhaps, a key role in this will be designated to NFT marketplaces like Opensea, since it is these platforms that provide all the tools for NFTs to change hands. Although, as we have recently found out, serious marketplaces are too, subjected to hacks and bugs.