Exactly a year ago Hermès, the French luxury brand, recently won a trademark dispute against Mason Rothschild, creator of MetaBirkin NFTs, over the use of the name “Birkin” and BIRKIN trade dress. This win is not only a victory for Hermès, but also a testament to the importance of protecting the intellectual property rights of all luxury brands.
The Birkin bag is named after the British singer and actress Jane Birkin and is one of the most recognizable and sought-after luxury handbags in the world. The bags, which can cost upwards of $10,000-$200,000, are known for their exceptional craftsmanship and timeless design.
Mason Rothschild sold his first NFT Birkin named the ‘Baby Birkin’ auctioned off for $23,500, which is more than what the average Birkin is sold for. This didn’t immediatly strike Hermès’ attention, but what did is the MetaBirkin collection that came months after. The MetaBirkin collection sold for over $1 million in the first auction, causing Hermès to then take legal action. The company argued that the unauthorized use of the name “Birkin” by Metabirkin was an infringement of its trademark rights and would lead to confusion among consumers. Additionally arguing that consumers would blindly believe that Rothschild’s project was directly approved by the Hermès brand.
Rothschild argued the NFT collection was not at all inspired by the Hermès Birkin, but by a Gunna song called Baby Birkin. He then equally argued that his use of the BIRKIN name was protected by his First Amendment Rights and did not qualify as Trademark Infringement.
But Unfortunately the Manhattan Federal Jury, did not side with Rothschild, finding him liable for trademark infringement. Rothschild was ordered to pay Hermès $110,000 of revenues from the sales and $23,000 for cybersquatting. Even before a Verdict has been reached many Luxury brands like Chanel, Burberry, and Gucci quickly began filing trademark applications for the current and future use of claimed NFTs. Brands noticed that when MetaBirkins were minted the BIRKIN registration only covered Leather or imitation leather goods.
This ruling is a clear victory for Hermès and may have highlighted the importance of trademarks, but there are still many unanswered questions regarding IP implications with the minting of NFTs.