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

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.

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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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Erin McCormick