Jasmine Yu is an IPilogue Writer and a 1L JD Candidate at the University of Toronto.
The Hermès Birkin is undoubtedly among the most iconic bags in history. Most of us can recall Samantha from Sex and the City being told: “it’s not a Bag, it’s a Birkin.” The Birkin has become the ultimate status symbol: its limited production makes it incredibly hard to secure. The bag is immediately recognizable due to its timeless silhouette, features in TV shows and movies, and popularity with celebrities and socialites.
The Birkin’s distinctive shape has acquired a secondary meaning, such that its trade dress has a trademark registration with the US Patent & Trademark Office. The Birkin’s hefty price tag — a Diamond Himalaya Birkin sold for over $400,000 in 2017 — has made it a prime target for knockoffs. Hermès is embroiled in constant legal battles defending the Birkin against trademark infringement and passing-off.
Recently, Hermès has tested out the scope of their intellectual property rights in the metaverse. On January 14, 2022, Hermès filed a trademark infringement and dilution lawsuit against Mason Rothschild, the designer of MetaBirkin Non-Fungible Tokens (NFTs), a collection of 100 fur-covered Birkin-shaped bags, which launched in December 2021 on the NFT exchange platform OpenSea.
Hermès claims that beginning on December 2, 2021, Rothschild’s advertising of his MetaBirkin NFTs infringed Hermès’ “globally recognized” “BIRKIN” trademark and Birkin bag trade dress. They claim that Rothschild’s usage of their marks was likely to cause confusion in the minds of the purchasing public and create a false impression that Rothchild’s NFTs were authorized, sponsored, or approved by Hermès.
Hermès claims trademark infringement, false designation of origin, and trademark dilution. They seek monetary damages, an injunction to bar the further use of Hermès’ marks, a transfer of Rothschild’s metabirkins.com domain, and delivery of all unauthorized products and advertisements.
On December 16th, 2021, Hermès sent a cease-and-desist letter to both OpenSea and Rothschild, notifying them of the “blatant violation of intellectual property.” While OpenSea, the NFT exchange platform, removed the NFTs, Rothschild still advertises and offers his NFTs. However, Rothschild has since added disclaimers on his website, stating “We are not affiliated, associated, authorized, endorsed by, or connected with HERMÈS,” and provides a link to the official HERMÈS website. Hermès notes the absence of these disclaimers from all other channels that sell MetaBirkins, creating confusion among consumers.
Trademark Protection in the Metaverse
Rothschild addressed the cease-and-desist letter in an Instagram post, claiming that in creating MetaBirkin NFTs, he “re-interpreted the form, materiality, and name of a known cultural touchpoint” and that selling his MetaBirkin NFTs was “akin to selling them as physical art prints.”
Hermès, however, states that MetaBirkin NFTs’ success undoubtedly arises from the “confusing and dilutive use” of their trademark. MetaBirkin NFTs were even described as a “tribute to Hermès’ most famous handbag, the Birkin,” in its initial offering on OpenSea. Citing one commentator, Hermès claimed that but for the NFT being called a Birkin, Rothschild’s NFTs would not get any attention.
Is this Fair Use?
Several barriers may preclude Rothschild from successfully claiming fair use. His extensive use of Hermès’s trademarks — i.e., the name “MetaBirkin,” the metabirkins.com domain, the hashtags #MetaBirkins and #NotYourMothersBirkin — is likely commercial in nature, which conflicts with fair use claims.
Fair use also does not provide protection when the alleged infringer used the mark as a trademark of their own, which Rothschild has done by repeatedly complaining of ‘counterfeited’ or ‘fake’ MetaBirkins on NFT exchange platforms.
In support of Hermès’ contention of commercial use, the 100 MetaBirkin NFTs sold for $42,000 initially, and have garnered re-sales of $1.2 million, of which, Rothschild is entitled to 7.5%. Rothschild has already earned over $120,000.
Future of Fashion in the Metaverse
While trademark law has well been established for luxury fashion, the metaverse complicates existing law. This legal battle has raised the novel issue of whether Hermès’ trademarks extend to digital content. Other big-name brands are testing the waters of the metaverse, such as Mercedes-Benz collaborating with artists to turn their G-Class into NFTs.