The couture bagmaker Hermès has sued self-proclaimed artist and entrepreneur Mason Rothschild for trademark infringement, dilution, and confusion. Rothschild has been selling NFT versions of the Birkin, Hermès’s signature bag, in the Metaverse – a territory that we can loosely describe as the internet parallel to real-life society. He calls these bags “MetaBirkins.”
The Rothschild MetaBirkin is an image of a bag in the same shape and style as a Birkin but covered in colorful or patterned fur. They have been selling quite well since their release in December 2021 – Rothschild has brought in over a million at this point.
If you are struggling to remember what an NFT is, check out my post about NFTs from last year.
The Tipping Point: Free Expression or Commercial Trading
Rothschild has argued against the suit, claiming that his MetaBirkins are protected under the First Amendment as artistic expression. He says that each furry MetaBirkin is a commentary on the usage of luxury leather in a real Birkin.
He likened the situation to Rogers v. Grimaldi. This historic IP case allowed director Federico Fellini to use the iconic names “Ginger and Fred” as the title of his film. His fictional protagonists called themselves this after the famous pair, Ginger Rogers and Fred Astaire. The ruling specified that the filmmaker made the allusion clear. That is, he was not trying to confuse anyone into thinking that Ginger Rogers and Fred Astaire were in his movie to increase ticket sales.
Trademark Confusion – in the Headlines
On the other hand, Hermès has pointed out that Rothschild is trying to capitalize on consumer goodwill toward the Birkin in the MetaVerse – not run an experimental art project. Rothschild has stated that the MetaBirkins hold the same “I’m wealthy” status as a real Birkin, and they are an investment piece just like the Hermès bag.
That could slant more like trading on the name of Hermès without their permission.
Several articles from Elle, L’Officiel, and the New York Post also mistakenly reported that the MetaBirkins were a collaboration between Rothschild and Hermès. The confusion is evident, even if the court has yet to confirm Rothchild’s intention.
Rothschild asked for the case to be dismissed, but a judge has already ruled that out. Hermès will get a chance to argue their trademark infringement case in court. NFT creators are watching to see how this may change the trademark game in the Metaverse.