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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
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
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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
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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