[IP Law] Hermes sues MetaBirkin for trademark infringement – Trademark
Hermesthe French luxury company with a market cap of 142 billion euros ($162 billion), sued the artist, digital creator and NFT creator Mason Rothschild, who designed the MetaBirkins works of art protected by NFTs. The litigation was filed in the United States District Court for the Southern District of New York on January 14, 2022.
Hermes accuses the creator of the NFT of being “a digital speculator looking to get rich quick by appropriating the METABIRKINS brand to create, market, sell and facilitate the exchange of digital assets known as non-fungible tokens (NFTs).“He continues that the”The METABIRKINS brand simply rips the famous BIRKIN brand from Hermès by adding the generic prefix “meta” to the famous “BIRKIN” brand.“.
Source: MetaBirkins Instagram Page
Indeed, Hermès has a long list of brands, and the NFTs most certainly show Birkin-type bags. The designer has created 100 digital faux fur handbags as a “tribute to Hermès’ most famous handbag”. Some of the digital assets were resold for over $40,000 and according to NFT Rarible Marketplace, the collection fetched over $1.2 million.
Rothschild, instead, made a statement claiming that the METABIRKIN designs are simply a creation of art.
Instagram post by MetaBirkins and Mason Rothschild (CLICK ON A PICTURE TO ENLARGE)
Based on the complaints, Hermès claimed to be the owner of a list of word marks relating to a wide range of goods and services on the word “Hermès”, and they also claimed to be the owner of No. 2991927 (class 18) “Mark “BIRKIN”. Hermès also claimed infringement of its trade dress on the BIRKIN design.
In mid-December, Hermès sent a cease and desist letter to Rothschild and persuaded OpenSea to remove the NFT listings. A long list of brands was attached to the letter, with the term “Hermès” covering almost all classes, but not all digital products.
Regarding the Hermès brand, a class has been deleted regarding “images, sounds and electronic data relating to clothing, footwear, handbags, watches”, etc. Cancellation refers to a lack of evidence of continued use.
Birking bags. Credit: hermes.cn
The Birkin brand is much narrower and relates to handbags that appear to be physical handbags. However, this includes the design of the handbag, which could very well be a problem for Rothschild.
Rothschild claims First Amendment rights for art, saying: “The First Amendment gives me the right to make and sell artwork depicting Birkin bags, just as it gave Andy Warhol the right to create and sell artwork depicting Campbell cans.“
We would also like to touch on the technical side a bit. In addition to claiming trademark infringement citing infringement on “Hermès” (on several classes), “BIRKIN” (on class 18) and the trade dress of the bag, Hermès also claimed unfair competition under 15 U.S. Code § 1125(a)1 and 15 United States Code § 1125(c)2. We believe this is the miscellaneous protection claimed by Hermès for the reasons below:
- An NFT bag sold on a platform is not a bag in the real world: whether or not it is protected by the traditional Nice classification remains to be explored by legislation and case law. To bring it under Chinese law, we expect such protection to be granted under Art. 6 and Art. 2 Anti-Unfair Competition Law where similar protection would be afforded as 15U.S. Code § 1125(a).
- The defendant in this case used “METABIRKIN” as a trademark. Hermès claimed its infringement not only under the theory of confusion, but also by citing 15 US Code § 1125 (c), purporting to claim “BIRKIN” as a famous trademark, and METABIRKIN has diluted the distinctiveness of the “BIRKIN” trademark. Similarly, protection under Chinese law would be granted under Art. 13 of the Trademark Law of the PRC, which stated that “An application for registration of a trademark which is a replica, imitation or translation of another well-known trademark already registered in China for use on non-identical or non-similar goods – which misleads the public and may harm the trademark interests of said well-known mark – will not be registered and the use of such mark will be prohibited.”
The trial has just started and we will wait to see that it plays out in court. Fashion brands and others companies interested in cryptocurrencies and NFTs should be aware that they need adequate brands covering digital goods, and they should also be creative going through a situation similar to that of Hermes.
1 Any person who, on or in connection with goods or services, or any container of goods, uses in trade any word, term, name, symbol or device, or any combination thereof, or any false designation of origin, false or misleading description of facts, or false or misleading representation of facts, which-
(A) is likely to confuse, or cause error, or to mislead as to such person’s affiliation, connection or association with another person, or the origin, sponsorship or endorsement of its goods, services, or business activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities or geographical origin of its or another person’s goods, services or business activities, shall be subject to civil action by any person who believes that he or she is or is likely to be harmed by such an act.
2 Subject to principles of equity, the proprietor of a mark with a reputation which is distinctive, by nature or by acquired distinctiveness, is entitled to an injunction against another person who, at any time after the proprietor’s mark is become famous, begins to use a mark or trade name in trade likely to cause dilution by blurring or dilution by tarnishing of the famous mark, regardless of the presence or absence of actual or probable confusion, competition or real economic damage.
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