Thursday, 9 February 2023

The ‘MetaBirkins’ and the HERMÈS brand

 


Jury rules artist’s NFTs of ‘MetaBirkins’ violate Hermès’ trademark rights

 

New York jury rules against Mason Rothschild for selling digital copycat versions of the fashion house’s famous bags

 

The jury awarded Hermès $133,000 in damages for trademark infringement.

 

Erin McCormick

Thu 9 Feb 2023 00.18 GMT

https://www.theguardian.com/fashion/2023/feb/08/hermes-metabirkins-trademark-court-case-mason-rothschild

 

In one of the first cases to address the high-tech new art world of non-fungible tokens (NFTs), a New York jury ruled on Wednesday that an artist violated the trademark rights of the French fashion house Hermès by selling pictures of furry, copycat purses as NFTs.

 

The jury ruled that artist Mason Rothschild’s unauthorized versions of Hermès’s iconic Birkin bags, which the artist covered in fur, featured in an image collection he dubbed “MetaBirkins” and sold for a total of over $1m, were likely to confuse consumers.

 

The jury awarded Hermès $133,000 in damages for trademark infringement, dilution and a violation called “cybersquatting”, which involves registering or using a brand’s trademark in bad faith.

 

The jury found that Rothchild’s use of the bag’s likenesses did not constitute a protected form of speech under the first amendment.

 

Rothschild’s attorney Rhett Millsaps called the result a “terrible day for artists and the first amendment”. Representatives for Hermès did not immediately respond to requests for comment by Reuters.

 

The case has been closely watched for its potential to clarify how trademark law will apply to NFTs, which are unique tokens on blockchain networks often used to verify ownership of digital art.

 

Hermès prized leather Birkin handbags typically sell for tens of thousands of dollars each.

 

Rothschild portrayed the bags in 100 whimsical pieces showing purses covered in rainbow-colored shag fur or in green fur, wearing a red Santa cap.

 

Hermès sued, claiming the artist was simply “a digital speculator who is seeking to get rich quick by appropriating” the Hermès brand.

 

The “Metabirkins brand simply rips off Hermès famous Birkin trademark by adding the generic prefix ‘meta’, read the original complaint filed by Hermès in January last year, noting that the “meta” in the name refers to the digital metaverse now being pumped by technology innovators as the next big thing in tech profit-making.

 

Rothschild whose real name is Sonny Estival, compared his use of the bags with Andy Warhol’s portrayal of giant Campbell’s soup cans in his famous pop culture silk screens. He said his depictions of the bags were an absurdist comment on the excesses of the fashion world.

 

“I’m not creating or selling fake Birkin bags. I’m creating artworks that depict imaginary, fur-covered Birkin bags,” said Rothschild in a letter to the community after the case was filed.

 

Michelle Cooke, a partner at the law firm ArentFox Schiff LLP, who advises brands on these types of trademark issues, said the decision would be very meaningful to brands, as many have expressed interest in getting into the metaverse, where they might make money selling digital clothing that might be worn by avatars and the like.

 

“Unquestionably, this decision is an important win for Hermès and brand owners more generally,” she said on Wednesday. “We do not yet know what pushed the jury over to Hermès side. But one issue that they likely weighed was evidence indicating that Rothschild launched the MetaBirkins NFTs as a commercial venture,” more than an art project.

 

She said the fact the jury came with a decision after just one day of deliberation shows they found the issues clear-cut.

 

“The quickness of the decision also indicates that the jury was not hindered by the fact that NFTs were the medium at issue,” she said. “Instead, the jury seemed to find … that existing trademark laws are sufficiently elastic to protect brand owners’ rights as to NFTs.”

 

But she said the issue is likely to come up again as brands try to sell their products in the metaverse and artists continue to push the boundaries of new technological art types. This case might even end up being appealed, she said.

 

“There will continue to be tensions between brand and content owners in emerging digital environments,” she said.

 

Reuters contributed to this report

 



Are brands protected in the metaverse? Hermès and NFT artist spar in US court

 

Luxury retailer and creator of Birkin bag says Mason Rothschild’s MetaBirkin project has simply ripped it off and reaped the profits

 

Hermès claims the artist is simply ‘a digital speculator who is seeking to get rich quick by appropriating’ its brand.

 

Erin McCormick

Tue 7 Feb 2023 13.56 GMT

https://www.theguardian.com/fashion/2023/feb/07/hermes-nft-artist-birking-bag-metabirkin-new-york-court

 

Pictures of 100 Birkin bags covered in shaggy, multi-colored fur have become the focus of a court dispute that will decide how digital artists can depict commercial activities in their art and cast new light on whether brands are protected in the metaverse.

 

In the case, being heard this week in a New York federal courtroom, the luxury handbag maker Hermès is challenging an artist who sells the futuristic digital works known as NFTs or non-fungible tokens.

 

Artist and entrepreneur Mason Rothschild created images of the astonishingly expensive Hermès handbag, the Birkin, digitally covered the bags in fur and turned the pictures into an “art project”, which he called MetaBirkin. Then he sold editions of the images online for total earnings of more than $1m, according to court records.

 

Hermès promptly sued, claiming the artist was simply “a digital speculator who is seeking to get rich quick by appropriating” the Hermès brand.

 

The “Metabirkins brand simply rips off Hermès’s famous Birkin trademark by adding the generic prefix “meta”, read the original complaint filed by Hermès in January last year, noting that the “meta” in the name refers to the digital metaverse now being pumped by technology innovators as the next big thing in tech profit-making.

 

Allow and continue

Rothschild, whose real name is Sonny Estival, countered that he has a first amendment right to depict the hard-to-buy, French handbags in his artwork, just as Andy Warhol portrayed a giant Campbell’s soup cans in his famous pop culture silk screens.

 

“I’m not creating or selling fake Birkin bags. I’m creating art works that depict imaginary, fur-covered Birkin bags,” said Rothschild in a letter to the community after the case was filed. “The fact that I sell the art using NFTs doesn’t change the fact that it’s art.”

 

Many in the fashion industry have expressed interest in getting into the metaverse, where brands might make money selling digital clothing and accessories that can be worn and traded by electronic avatars.

 

“It will be a very meaningful case for the fashion industry,” said Michelle Cooke, a partner at the law firm Arentfox Schiff LLP, who advises brands on these types of trademark issues, but was not involved in this case.

 

“Their ability to control their brands in these digital spaces as much as they do in the real world will have significant implications about how much money they put into these new environments and how they enforce and protect their rights,” she said.

 

But, Cooke said, the case will, conversely, have big implications for a new generation of digital artists, in deciding how they can depict commercial activities in their art.

 

“We have a new wave of digital artists coming into existence and the benefit of an NFT is that it allows them to track and monetize their art in ways that they weren’t able to do before,” said Cooke, adding there may need to be new lines drawn as to how artists can pull from the commercial world to make an artistic statement. “So there’s tension.”

 

One hurdle that Hermès will have to overcome in the case is the fact that US trademark law requires brands to register their trademarks for each specific type of use, so digital sales might require a separate registration.

 

In the end, Cooke said the decision might come down to whether the jury believes Rothschild did the MetaBirkin project as an artistic project “or was it a money-making venture that he cast as an artistic project when he got into trouble”.

 

But she said, no matter the conclusion, the case was of such importance that it was likely to be a subject of argument for years to come.

 

“I will be shocked and amazed if it isn’t appealed,” she said.


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