NEWS

“MetaBirkin” NFTs Infringe Hermès’ “Birkin” Trademark Rights

United States District Court Southern District of New York, Judgment of February 8, 2023 – Case 1:22-cv-00384-JSR

 Contents

Legal Dispute Between Hermès and Artist Over “MetaBirkin” NFTs

This legal dispute involves luxury goods manufacturer Hermès and artist Mason Rothschild (Sonny Estival), who created NFTs named “MetaBirkin”. Hermès claims these NFTs infringe on their trademark rights and seeks damages. The artist argues that it represents an artistic expression to criticize animal cruelty in luxury fashion.

Hermès Seeks Damages for Trademark Infringement

The artist created a collection of “MetaBirkin” NFTs featuring images of Hermès’ “Birkin” handbags with faux fur. Hermès claims this infringes on their trademark rights and demands compensation.

Hermès Files Lawsuit After Unsuccessful Warning

After Hermès issued a warning to the artist, which was ignored, Hermès filed a lawsuit. The artist relies on freedom of expression and artistic freedom as a defense.

Court's Decision in Summary Proceedings

The court rejects both the artist’s motion to dismiss the case without a factual examination and the motion of both parties for a decision in summary proceedings. The court finds that the Rogers test, balancing freedom of expression and artistic freedom with Hermès’ property rights, is applicable.

Hermès Wins the Lawsuit

Hermès wins the lawsuit, and the artist is ordered to pay damages of $110,000, corresponding to the net revenues the defendant earned through trademark infringement and exploitation of reputation. Additionally, Hermès is awarded $23,000 in damages for cybersquatting.

To the point

The decision in the case of the “MetaBirkin” NFTs and their infringement of Hermès’ “Birkin” trademark rights garnered global attention, partly due to the involvement of the renowned brand Hermès and its iconic “Birkin” bag. Another reason for the high interest was that it was one of the first cases where NFTs were the subject of trademark law claims. The application of existing trademark law norms to the new use of digital goods in the form of NFTs was eagerly anticipated.

The decision to order the defendant to pay damages was not surprising and would likely have been upheld by German courts as well. Despite the questionable similarity between NFTs and physical handbags, it was crucial that the “Birkin” trademark was protected against reputation exploitation beyond the risk of confusion. The central question was whether freedom of expression or artistic freedom could justify the defendant’s use of the “MetaBirkin”. The defendant argued that the fur overlay on the “MetaBirkin” was a critique of animal treatment.

Although artistic freedom generally protects every artistic statement, it is not unlimited and is bounded by other fundamental rights, including the trademark owner’s property rights. The balancing of these rights resulted in prioritizing Hermès’ property rights. The critical statement of the “MetaBirkin” images was not obvious, and the necessary clear distinction from Hermès’ “Birkin” trademark was lacking. Additionally, statements by the defendant about the commercial success of his NFT collection argued against pure artistic or freedom of expression.

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Karin Simon
Lawyer
Certified IP Lawyer

Susanne Graeser
Lawyer
Certified IP Lawyer

Uhlandstr. 2
80336 Munich
Germany

Phone +49 89 90 42 27 51-0
Fax +49 89 90 42 27 51-9

Karin Simon
Rechtsanwältin

Fachanwältin für
gewerblichen Rechtsschutz

Susanne Graeser
Rechtsanwältin

Fachanwältin für
gewerblichen Rechtsschutz

Uhlandstr. 2
D-80336 München

Tel. +49 89 90 42 27 51-0
Fax +49 89 90 42 27 51-9