6 May 2022TrademarksAlex Baldwin

Hermes can proceed with 'MetaBirkins' lawsuit

Artist Mason Rothschild will face a trademark infringement suit bought by Hermès targeting his sale of non-fungible tokens (NFTs) depicting the brand’s iconic Birkin bags.

The French design house first sued Rothschild in the US District Court for the Eastern District of New York on January 14, claiming that the artist’s 100 “MetaBirkin” NFTs infringe its Birkin bag trademark.

Rothschild filed a motion to dismiss the lawsuit, and a followup motion to dismiss an amended complaint, claiming that the NFTs were “fancifal interpretations” depicting the bags as fur-covered in an attempt to comment on the “animal cruelty inherent” in Hermès’ manufacturing of the Birkin bags.

“Trademark law does not give Hermès control over Rothschild’s art. Nor can it,” the memorandum in support of the motion to dismiss claimed, asking the court to dismiss the lawsuit.

However, a one-page order handed down by senior district court judge Jed Rakoff on May 5 denied Rothschild’s motion.

Rothschild’s defence

The artist’s argument centered around his depictions of the Birkin Bags and the use of the “MetaBirkins” name are artistically relevant and do not “explicitly mislead” consumers into thinking that they are associated with the Hermès brand.

Rothschild cited the Rogers test determined in Rogers v. Grimaldi (1989), in which a court “must determine whether the use of the trademark has any artistic relevance whatsoever” which he argues prevents the pieces from infringing.

He added: “Artists generally are free to choose the topics they address and to depict objects that exist in the world as they see them. Rothschild’s fanciful “MetaBirkins” depict furry Birkin bags, reflecting his comment on the fashion industry’s animal cruelty and the movement to find leather alternatives.”

Rothschild also cited Andy Warhol’s famous depictions of Campbell’s Soup and Coca-Cola in a “stylised but plainly recognisable form” to prove his point.

He added: “These images, and the NFTs that authenticate them, are not handbags; they carry nothing but meaning. Hermès asks this court to suppress Rothschild’s art and to restrain his protected speech in the service of protecting Hermès’ commercial interest in its trademarks.”

NFT infringement

Following the introduction of NFTs into the public consciousness last year, several projects have emerged that have prompted concerns about potential infringement of trademarks, designs, and copyrights of prominent artists and brands.

In a similar case, Nike sued online reselling storefront StockX for listing NFTs of Nike-branded shoes without its permission.

According to the lawsuit filed in February, StockX minted NFTs that prominently features Nike’s trademarks and has marketed them at “heavily inflated prices” to customers who “believe or are likely to believe” that the digital assets are authorised by the sneaker giant.

Nike also noted that the NFTs were billed as “100% Authentic Nike-branded Vault NFTs”.

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19 January 2023   With the court date just weeks away, will a clash between the virtual and real worlds live up to the hype? Sarah Speight investigates.
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