Last September 30th, ended another important round in the battle between the Hermés fashion house and the U.S. artist Mason Rothschild, a dispute involving the collection of digital images depicting Birkin bags covered in faux fur, precisely titled "MetaBirkins'", which Rothschild designed and marketed by selling them in the form of NFTs.
The case, brought last January by the French fashion house before the New York Court to protect its trademark rights on the acclaimed "Birkin" handbag model and, in general, its industrial property rights against the illicit exploitation of the same in the metaverse, is being followed very closely by all jurists dealing with intellectual property as it constitutes an authentic leading case in this subject, given that is centered on the interference between trademark rights and NFTs and the determination of the extent to which the former can extend into the virtual world.
In the order published last September 30th, Judge Jed Rakoff of the U.S. District Court for the Southern District of New York rejected the appeal brought by Mason Rothschild against an earlier decision rendered in May in which the same Court had rejected Rothschild's request to dismiss Hermès's claim that its trademark rights had been infringed through the famous "MetaBirkins" project.
Beyond the procedural technicalities and even substantive ones related to the protection guaranteed by the First Amendment of the U.S. Constitutional Charter, claimed by Mason Rothschild by arguing the artistic relevance of his own works, it is important to notice that the U.S. judge found that, like Hermés' Birkin bags, the "MetaBirkins" made by the artist are nonetheless valuable products. In fact, the related NFTs were sold for more than a million dollars, which, according to the U.S. judge, would be a further confirmation of the confusion generated among both consumers and media, who were led to believe that Hermès was somehow connected to the line of NFTs made by Rothschild or that there was in any case a partnership between them.
This case is one of a growing number involving the Web3 (such as the case brought by Nike against the second-hand market operator StockX) that both jurists and trademark owners are monitoring with particular interest and attention, and which will unavoidably have to be considered when developing future trademark protection and filing strategies. It is no coincidence that the most important and famous brands, not only those best known in the fashion world but also in other sectors, have been rushing lately to file new trademark applications for their use in the metaverse as NFTs or other virtual goods. This also as a consequence of the growing interest shown by consumers in digital experiences.
It is therefore increasingly important, both for those in the legal world and for all those aiming to expand into the virtual world, to understand the new limits of intellectual property protection by no longer limiting themselves monitoring the physical world, but also the digital one in order to keep abreast of the changes in technology that are inevitably affecting the evolution of intellectual property sector regulations.