Luxury Handbag Maker Wins Trademark Lawsuit Against ‘MetaBirkin’ NFT Maker

Look to your left and see a picture of a famous, extremely expensive luxury bag of the Birkin brand. On the right is a non-fungible token, a digital image whose ownership rights are registered on a blockchain. On Wednesday, a jury in New York decided that these MetaBirkin NFTs were indeed a huge ripoff of the famous Birkin brand bags.

Last year, French luxury brand Hermès sued NFT maker Mason Rothschild, who legally goes by Sonny Estival according to court documents, claiming the creator’s “MetaBirkins” NFT collection ripped off the Birkin bag trademark in an attempt to “get rich quick” by using Birkin’s brand image for its non-fungible tokens. Hermès argued that this diluted their brand, especially with Rothschild’s plan to open up a specific “MetaBirkin” online store and a planned “Build-a-MetaBirkin” competition.

Financial Times reported that after two days of deliberation, the jury reached a verdict that will force Rothschild to pay $110,000 for copyright infringement and an additional $23,000 for squatting on the Birkin domain name, which the bag maker claimed led to brand confusion.

Rothschild has made this case about more than just his own NFT project. As quoted by CoinDesk, the MetaBirkins creator claimed the project was an “experiment” and an artistic expression of the values ​​of luxury brands. He even asked the jury a very relevant question: “Is it the picture or the actual product.”

The decision can be an important plot point for other cases that are actively being dealt with trademark, copyright and NFTs. The decision could set a precedent for the many other NFT projects that have incorporated real-world images, particularly trademarked brand images, into their work. It can set the tone for all other projects, declaring them to be more of a commodity than an artistic expression.

G/O Media may receive a commission

Addiction counseling

Safe Haven Health

Available to everyone
Safe Haven prioritizes your needs with flexible and individualized addiction treatment, especially opioid and alcohol addiction.

Hermès told the FT that while it supports artistic expression, it had to “protect … the integrity of the brand.”

On Twitter, Rothschild regretted the decision, lamenting “what happened today will continue to happen if we don’t keep fighting.”

Gizmodo reached out to Hermès’ legal team for comment, but we did not immediately hear back.

The NFTs were first made available in December 2021 with an initial limited release of 100 tokens that took the same image of a Birkins bag and then covered them with different types of fur.

After Heremes issued a cease and desist for the NFT collection that same month, Rothschild took to Twitter to release a public statement arguing that his project was a “playful abstraction” of the existing Birkins brand and a “commentary on fashion’s history of animal abuse, and its current embracing fur-free initiatives and alternative textiles.“While I apologize if you were offended by my art, as an artist, I will not apologize for making it,” the creator said.

Rothschild put his work on the same level as other artists who have used brand images in their art, such as the famous painter Andy Warhol who used images of Campbell’s soup cans and Maridelightning Monroe in his work. Last year Rothschild tweeted a photo of a letter a Campbell Soup Company executive sent to Warhol at the height of his career.

A regular old Birkin bag sells for anywhere from $9,000 to $500,000. When the NFT collection’s listing on digital marketplace OpenSea was taken down last January, it had already made over $1 million in sales, according to a report from Reuters. In court documents, Hermes claimed the project achieved about $1.1 million in sales, although Rothschild has said he only made $125,000 from initial sales plus royalties.

Rothschild’s lawyers questioned whether the ultra-rich who could afford a Birkin bag would really be confused by a fake, digital simulacrum. according to New York TimesNFT creator’s attorney Rhett Millsaps II argued that art needs context, and Birkins were a “cultural symbol of peddling wealth and status.”