The legal battle between Hermès brand owner and artist Mason Rothschild, the creator of ‘MetaBirkin’ NFTs, has lasted more than a year. But in February, the Court ruled that the NFT version of the famous Birkin handbags infringes the rights of the Hermès fashion house.

Metabirkin NFTs infringe ‘Birkin’ trademark

In its verdict of 8th February, the jury of the U.S. District Court for the Southern District of New York found that Mason Rothschild had infringed the rights of the luxury brand Hermès and their ‘Birkin’ trademark, and ordered Rothschild to pay damages totaling USD 133,000, including USD 110,000 in estimated profits from the sale of NFTs and USD 23,000 for cybersquatting on MetaBirkins.com.

The limits of creativity with NFTs

The Court did not share the Rothchild’s arguments that ‘MetaBirkin’ was nothing more than an art form and a ‘commentary’ on the real Birkin bags, freely permissible under the ‘freedom of speech’ 1st Amendment to the U.S. Constitution.

Perhaps influenced by the reputed $1 million worth of NFT’s traded, the jury found that a similar concept to Andy Warhol’s use of a Campbell’s soup can could not be applied to this case, declaring ‘MetaBirkin’ a consumer product that infringed Hermès’ trademarks rather than a work of art.

Landmark verdicts in NFT cases

The Hermès verdict is the first settlement of an NFT case in the U.S, with many more likely to follow. In 2022 alone, a total of 1,867 applications for NFT-related trademark protection were filed with the EUIPO.

So given the volume of EUIPO filings specifically related to NFTs, its likely that the floodgates will soon open to a wave of litigation of this kind, not only in the U.S. but also in global markets.

Perhaps the first sign of this coming storm can be seen in the Court of Rome’s verdict in the Juventus vs Blockeras case. Blockeras, a platform which had been offering NFTs and other digital content related to the Italian club’s trademarks, suffered a similar fate at the hands of the courts, with the verdict confirming Juventus’ exclusive ownership of its brands.

This goes to show that if you haven’t done so already, then you should be seriously thinking about protecting your business against infringements involving NFTs, and doing so as early as possible.

By Tomasz Szmabelan ([email protected]), Senior Associate in Kochański & Partners Intellectual & Industrial Property Practice

Want to know how to effectively secure your brand for entry into the Metaverse? Visit www.kochanski.pl.