August 16

MetaBirkin: Hermes' counterfeit suit against NFTs


A groundbreaking case recently pitted Hermès against an American artist, Mason Rothschild. The latter had marketed NFTs depicting bags from the famous luxury brand.

Birkin handbag by Hermès

In order to render its decision, the American courts had to rule on the regime applicable to NFTs.  

Uncertainty over the legal regime applicable to NFTs

In the digital age, innovations that raise questions about the application of intellectual property law are multiplying: Web 2.0, then cloud computing, blockchain and Web 3.0, with its problems linked to metavers and NFTs.

NFTs, new objects of intellectual property

NFT stands for "non fungible tokens". The attempts to clarify this definition by explaining that such a token is " stored on a blockchain to become the certificate of authenticity for an attached digital file (usually art). The digital file itself is fungible: an image, video or sound can be copied and duplicated, but not the cryptographic token that serves as its certificate. ».

NFTs are therefore unique, unlike cryptocurrencies, which are fungible. They are also authenticated using blockchain technology.

The term became more widespread in 2017 with the first art collections using this technology.. In fact, NFTs are mainly found in artistic fields (authentication of images, music or videos). The elements to which these digital tokens are attached are therefore, in principle, subject to intellectual property law. How can this legal regime be combined with new forms of expression?

The "MetaBirkin" case: when NFTs take over trademarks

Mason Rothschild, a Californian artist who has founded a creative studio, began by creating an NFT in 2021 called "Baby Birkin": an animated image depicting an Hermès Birkin bag and a fetus inside, which he sold for $23,500 (in collaboration with artist Eric Ramirez). Building on this success, a few months later he created a new series of NFTs featuring fur handbags also inspired by the famous Birkin model created by Hermès in 1984. Each model is produced in 100 copies and sold as an NFT. He calls this project "MetaBirkin". However, at no time did the artist ask Hermès for permission to use the image and name of this bag.

6 NFT examples from the MetaBirkin project

Hermès estimates that the sale of these images brought in $1.1 million for Mason Rothschild.

In response, the luxury brand filed a lawsuit in the U.S. in January 2022, claiming trademark infringement and counterfeiting (due to the unauthorized use of its intellectual property for commercial purposes). Hermès owns the rights to the name "Birkin", including several registered trademarks.

For the first time, American judges were asked to rule on possible infringement of intellectual property rights in the NFT field. It should be noted that, in general, artists are not immune from being sued for infringement (as we reported in our article on Jeff Koons).

Application of existing regulations in the "MetaBirkin" dossier

The "MetaBirkin" case illustrates the existing debate on whether or not the same intellectual property rules should apply to non-fungible goods. Even if it is not possible at this stage to anticipate all the questions raised by NFTs, existing regulations already provide some answers, which the American courts decided to apply in this case.

NFT creator's defense

« I don't create or sell fake Birkin bags. I have made artworks depicting imaginary Birkin bags covered in fur. "said the artist.

His lawyers also argued that Mason Rothschild's creations fell within the scope of the 1st amendment of the U.S. Constitution, which protects freedom of expression. The defense drew a parallel with the artist Andy Warhol, who had been able to sell artworks depicting Campbell's soup cans (thus integrating a registered trademark into his work). Mason Rothschild also emphasized the artistic and committed aspect of his creations, saying that he wanted to present a more sustainable vision of fashion through the MetaBirkin project. According to him, selling art in the form of NFT does not change the fact that it is an artistic endeavor.

A verdict in favor of trademark owners

On Wednesday February 8, 2023, a jury in Manhattan federal court in New York found Mason Rothschild guilty of counterfeiting, trademark dilution and cybersquatting. The court ruled that NFTs did not fall within the scope of the 1er amendment, and applied "real world" law to NFTs: to use a trademark on a digital object, prior authorization must be obtained from the trademark owner. In addition, the misuse of the Birkin and Hermès trademarks (on Instagram, Twitter, as a domain name...) was likely to cause confusion with the activities of the Parisian fashion house. The 28-year-old Californian was therefore ordered to pay $133,000 in damages to Hermès.

In June 2023, Hermès also obtained a block on MetaBirkin sales.  

This case sets an important precedent, at the heart of the debate on the scope of intellectual property law in the virtual world, since use in the metaverse can constitute infringement in the real world. Other similar cases are currently underway, including the one between Nike and the StockX platform selling NFTs of its cult sneakers

So be careful before using a brand, whatever the medium (physical or virtual)! Our firm will be happy to answer any questions you may have.


conflict, Counterfeit, Hermès, brand, MetaBirkin, metavers, metavers, NFT

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