Hermès Triumphs “MetaBirkins” in landmark lawsuit: what this implies for artists and luxury brands in Web3

A collection of digital Birkin bags covered in shaggy, multi-colored fur has been the center of a court case this past week, as the much-discussed trial between NFT artist Mason Rothschild and Hermès comes to a verdict. An unprecedented lawsuit of its kind for both the fashion and NFT industries, the trial attracted widespread interest, spurring polarizing opinions on whether Rothschild had crossed the line of one of the world’s most coveted luxury brands. 

The Lowdown

In January 2022, French luxury fashion house Hermès filed a lawsuit against 28-year-old artist Mason Rothschild for alleged trademark infringement.

The allegation points to Rothschild’s NFT collection, called “MetaBirkins”, which was released in November 2021 with the intention of democratizing and raising awareness for alternative textiles in the fashion industry. Coined by the artist as “Not Your Mother’s Birkin”, the flashy collection replicated Hermès’ most famed handbag digitally, covered in colorful fur and patterns, as well as artworks such as Van Gogh’s Starry Night and Leonardo da Vinci’s The Last Supper. The collection became an instant hit among collectors and fetched over 200 ETH in primary sales (around US$790,000 at the time).

In its complaint, Hermès calls Rothschild a “digital speculator” who is “seeking to get rich quick by appropriating the brand ‘MetaBirkins’ for use in creating, marketing, selling, and facilitating the exchange of digital assets known as non-fungible tokens (NFTs).” It continues that the digital collection brand simply rips off Hermès’ famous Birkin trademark by adding the generic prefix ‘meta’ to the famous trademark Birkin”.  According to Hermès, a few customers have mistakenly believed that the brand was affiliated with the “MetaBirkins” NFTs.

Concluding a year-long litigation, a nine-person federal jury in Manhattan decided on Wednesday that Rothschild had infringed the company’s trademark rights and the artist is ordered to pay Hermès a total of US$133,000 in compensations — US$110,000 for intellectual property infringement and US$23,000 for cybersquatting.
 

Luxury IPs in the age of Web3 
 

“Great day for big brands. Terrible day for artists and the First Amendment,” one of the artists/ lawyers, Rhett Millsaps, said in a statement.

Hermès’ victory reinforces the importance of protecting luxury IPs (intellectual properties) in the Web3 space. Hermès' success in defending their trademark on the Birkin bag shows that luxury brands can take legal action against those who use their names or logos without permission, even in the decentralized and borderless world of Web3.

This is important for luxury brands as they navigate the new digital landscape. Recently, various luxury brands have expressed interest in establishing a presence in Web3, including Hermès, has its own plans for Web3 that Rothschild hindered, having filed a trademark with the United States Patent and Trademark Office (USPTO) to protect its name in the Web3 space.

What does the verdict mean for Web3 creators?

During the trial, Rothschild’s defense team also compared his work to that of pop artist Andy Warhol, who famously depicted Campbell’s soup cans and Coca-Cola bottles “in stylized but plainly recognizable form.”

The outcome of this lawsuit ultimately raises questions about the limitations for artists in the Web3 space. Rothschild claimed that his hand-painted Birkin bags were works of art and should be protected under freedom of expression. “What happened today was wrong,” he said in a statement. “What happened today will continue to happen if we don’t continue to fight.”

The court, however, ruled in favor of Hermès, stating that Rothschild's use of the Birkin name was a violation of the trademark and did not qualify as a protected form of artistic expression.

The victory of Hermès over the trademark lawsuit against MetaBirkins will likely become a guidebook for both luxury IPs and artists in the Web3 space. It’s no doubt a blow for artists who may want to incorporate luxury IPs into their Web3 art, and brands are more likely to take legal action against artists who use their names or logos without permission, even in the supposedly decentralized and borderless world of Web3.

The case also highlights the need for a clear framework for the protection of luxury IPs and the rights of artists in the Web3 space. As the digital landscape continues to evolve, it is important for luxury brands and artists to work together to establish clear guidelines and regulations that balance the protection of IPs with the freedom of creative expression.