Hermès wins case over ‘MetaBirkin’ NFTs, setting precedent for NFTs in the fashion industry

7 March 2023 | Knowledge, News, The Right Focus

The legal battle between Hermès brand owner and artist Mason Rothschild, the creator of ‘MetaBirkin’ NFTs, has lasted more than a year. On 8 February, the Court ruled that the NFT version of the famous Birkin handbags infringed the rights of the Hermès fashion house.

NFTs infringe ‘Birkin’ trademark rights

Before discussing the verdict, it is worth recalling a series of earlier articles describing the dispute initiated by Hermès.

In its verdict of 8 February, a nine-member jury of the U.S. District Court for the Southern District of New York found that Mason Rothschild had infringed the rights of the luxury brand Hermès in the ‘Birkin’ trademark. The Court found in favour of Hermès and ordered Rothschild to pay damages totaling USD 133,000, including USD 110,000 in estimated profits from the sale of NFTs and USD 23,000 for cybersquatting on MetaBirkins.com.

The limits of creativity with NFTs

The Court did not share the artist’s arguments that ‘MetaBirkin’ was nothing more than an art form and a ‘commentary’ on the real Birkin bags.

According to Rothschild, this kind of creativity should fall under the First Amendment to the U.S. Constitution (freedom of speech).

However, the jury found that a similar concept to Andy Warhol’s use of a Campbell’s soup can could not be applied to this case.

As a result, the Court considered ‘MetaBirkin’ to be a consumer product that infringed Hermès’ trademarks rather than a work of art.

Landmark verdicts in NFT cases

The Hermès verdict is the first settlement of an NFT case in the U.S.
There will certainly be more litigation of this kind in the future, and not only in the U.S. but also in Europe.

This is confirmed by the recent verdict of the Court of Rome in a case between Juventus F.C., the legendary football club, and the Blockeras platform which offered for sale NFTs and other digital content related to the Italian club’s trademarks. We also covered this dispute in detail.

Given the number of filings with the EUIPO specifically related to NFTs, we have to assume that similar cases will soon become quite common.

Let’s remember that in 2022 alone, a total of 1,867 applications for NFT-related trademark protection were filed with the EUIPO, as we wrote about quite recently.

This just goes to show that it’s a good idea to start thinking now about how to protect your business against infringements involving NFTs.

Want to know how to effectively secure your brand for entry into the Metaverse? Feel free to contact me

Tomasz Szambelan

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