LAURA BLOCKMAN—Long considered the most iconic handbag in the world, the Hermès Birkin bag is the ultimate symbol of status, wealth, and luxury. The allure of the Birkin bag arguably lies in its exclusivity. Prices range from at least $10,000 up to $2 million, and the luxurious handbags are not available to purchase from Hermès’ online storefront. Purchasing a Birkin bag from a brick-and-mortar Hermès boutique is itself an uphill battle, a challenge that only adds to the mystique and lore that follow the Birkin. Hermès’ efforts to maintain an air of exclusivity around the bag are why the Birkin remains as sought after as ever almost four decades after its debut; now, the French fashion house has taken legal action to ensure the Birkin remains as exclusive in the metaverse as it is in real life.
On January 14, 2022, Hermès filed suit against digital artist Mason Rothschild in the Southern District of New York, asserting claims including federal trademark infringement and dilution. At issue are Rothschild’s MetaBirkins, a series of non-fungible tokens (NFTs) on the Ethereum blockchain that depict faux-fur Birkin bags. Rothschild began selling MetaBirkins NFTs on various NFT marketplaces after his Baby Birkin NFT sold for about 13 Ethereum, or around $23,500, in spring of 2021. The inspiration for the MetaBirkins NFTs, described as “Not Your Mother’s Birkin” on official MetaBirkins advertising, is no secret. In an interview for Yahoo! Finance in December 2021, Rothschild explained that “there’s nothing more iconic than the Hermès Birkin bag,” and that he “wanted to see as an experiment . . . if [he] could create that same kind of illusion that [the Birkin] has in real life as a digital commodity.” Rothschild’s experiment is clearly a success: the cheapest MetaBirkins NFT available now costs about the same in United States dollars as a “lower-end” physical Birkin bag.
In its complaint, Hermès claims Rothschild’s MetaBirkins NFTs infringe upon the luxury brand’s Birkin mark in a way that “is likely to cause confusion and mistake in the minds of the public.” The brand asserts Rothschild’s use of its Birkin mark in his NFTs will lead the public to believe Hermès creates and sells the MetaBirkins NFTS or that Hermès at least sanctions Rothschild’s use of the Birkin mark in his NFTs. The brand also claims Rothschild’s “sale and distribution of the MetaBirkins NFTs dilutes the distinctive quality of the Birkin mark,” causing injury to the Hermès brand. The sought-after damages include a permanent injunction against Rothschild’s use of the Birkin mark as well compensation for any profits Rothschild has gained from the sales of his MetaBirkins NFTs.
Rothschild has since taken to Instagram to assert a fair use defense under the First Amendment, stating “[t]he fact that I sell the art using NFTs doesn’t change the fact that it’s art.” In his post, Rothschild invoked Andy Warhol and his infamous Campbell’s soup cans paintings to explain why he has “the right . . . to use the term ‘MetaBirkins’ to describe truthfully what that art depicts . . . .” Still, in its complaint, Hermès vehemently rejected Rothschild’s claims and stated that “the title of ‘artist’ does not confer a license to use an equivalent to the famous Birkin trademark in a manner calculated to mislead consumers . . . .”
Hermès Int’l v. Rothschild is a case to watch. The case presents the Southern District of New York, and perhaps the Supreme Court of the United States, with exciting and novel legal issues concerning the intersections of intellectual property, technology, and fashion law. The polarizing nature of NFTs, partly due to their existence as a code on a blockchain, only adds to the precedential value of the case at hand. For example, Hermès Int’l presents an opportunity for courts to determine what exactly a consumer receives when he or she purchases an NFT that corresponds to a digital asset. Additionally, as more and more luxury brands enter the NFT market space, the need for clear intellectual property law concerning NFTs and their corresponding digital assets grows. Hermes Int’l allows courts to get ahead on this novel issue before litigation increases exponentially. Whatever the outcome, Hermès Int’l v. Rothschild is certain to alter the behavior of luxury brands, digital artists, and consumers as they move forward in this new digital reality.