The case, which has had a lot of repercussions in the American media, concerns a problem related to “NFTs” (non-fungible tokens) called “MetaBirkins”. The tokens, produced and marketed by Mason Rothschild, are a collection for the metaverse of 100 Birkin bags covered in fur and with “exclusive” designs.
Birkin bags are a creation of Hermès and, over the years, have become a symbol of status, exclusivity and wealth in the hands of those fascinated by fashion.
As a result, the French brand Hermès filed a lawsuit in January 2022 seeking injunctive relief with damages against Mason Rothschild for unlawful use of the Hermès HERMÈS trademark, the BIRKIN trademark and the BIRKIN visual identity.
In May, Rothschild asked for the case to be dismissed, which was denied and the prosecution then continued.
The case addresses issues such as trademark infringement, unfair competition, dilution and cybersquatting.
The arguments supporting the charge of dilution are based on the strength and exclusivity of the Birkin brand, bad faith on the part of Rothschild and the occurrence of actual confusion among consumers.
In addition, the prosecution says that Rothschild is trying to make money while replacing real-life protections with “virtual rights” and capitalizing on a brand that already has its own history and consolidated clientele in the market.
On the other hand, the defendant claims that the sale and promotion of the MetaBirkins was an artistic project and not a commercial activity.
His lawyer argues that MetaBirkin is a creative expression protected by freedom of expression.
The argument about the confusion generated by the nomenclature is based on the idea that the use of the expression “Meta” would have meant an artistic comment on the luxury handbag and that the term “Birkin”, in this case, would not have made a claim on the source, being insufficient to justify its restriction of use.
The artist also claims that the works were a form of criticism of the exaggeratedly expensive prices charged for bags made from animal leather in the real world, as well as a form of repudiation of animal cruelty.
It will also be argued that the sale of the MetaBirkins was a form of expression of the Birkins and not an attempt to affiliate with the brand.
Finally, the defense will rely on evidence that Rothschild always made a point of informing consumers that he was the one who produced the works, as well as making a disclaimer available on his website.
The jury will conduct a test to see if the situation creates the consumer confusion alleged by the brand.
This test is known as the “Polaroid Test” and takes into account a number of factors such as the strength of the brand, the similarity of the brands, the competitive and qualitative proximity of the products, evidence of actual confusion, bad faith in the adoption of another’s brand, among others.
Hermès, with its almost 200 years of history, promises evidence that favors it in every sense of the Polaroid test, through documents, evidence and terms that prove its performance in the market and its quality as a differentiator.
The brand also argues that the combination of the term “Meta” with the “Birkin” brand gives the false impression that Hermès itself is offering products in the metaverse.
In addition, evidence will be attached that the brand’s team has been studying the idea of developing and marketing NFTs since 2019. The debate that is brought up here has also had notable appearances in history, such as in the Gordon X Drape Creative, Inc. case.
One has to wonder in what situations and under what circumstances the use of trademarks in artistic expressions is considered legal.
It should be noted that Rothschild even registered the trademark “MetaBirkins.com” in 2021, while the Birkin trademark was registered in 2005.
Intellectual Property (IP) is an area of law that is directly related to digital assets and NFTs.
In addition to the case in question, we can mention cases such as Nike X StockX, which also brings IP to the fore with the entry of luxury brands into the metaverse and the production of their NFTs.
With these advances, the law will adapt and generate more and more precedents when it comes to the debate between originality, artistic expression and copyright.
If you have any questions about Intellectual Property, consult the specialist lawyers at PDK Advogados.
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