A federal jury in Manhattan, New York, decided in Hermès International’s favor in its trademark infringement action against artist Mason Rothschild over the distribution of his “MetaBirkins” NFTs, or “non-fungible tokens”, sold through the metaverse, an immersive virtual world existing only online and parallel to the physical world.
Rothschild was found guilty of “trademark infringement”, “brand dilution”, and “cybersquatting” by a nine-person jury in Manhattan. They determined that the First Amendment does not exclude liability. The outcome has allowed Hermès to be compensated $110,000 in damages for trademark infringement and brand dilution, as well as $23,000 in statutory damages for cybersquatting.
In November 2021, Hermès sued the 28-year-old artist for developing and selling 100 MetaBirkins – inspired Birkin bags. The luxury house claimed that NFTs confused consumers, weakened the brand, and jeopardized its NFT objectives.
A month later, Rothschild stated in an open letter that Hermès had written him a cease-and-desist letter, stating that he was infringing on its federally-registered trademarks through the sale of NFTs dubbed ‘MetaBirkins’. Writing back to Hermès, Rothschild claims that the NFTs are protected against Hermès’ trademark claims by “the First Amendment, which gives me every right to create art based on my interpretations of the world around me.”
After the verdict, Rothschild – who was physically absent due to not feeling well – expressed Hermès as “a multibillion-dollar luxury fashion house who says they ‘care’ about art and artists, but feel they have the right to choose what art is and who is an artist. Not because of what they create but because their CV doesn’t scream ‘artist’ with a pedigree from a world-class art school. That’s what happened today.”
With that said, Rothschild’s legal team may appeal.
Prior to Rothschild, Hermès had not filed a trademark infringement lawsuit in two decades and had never sued or sent a cease-and-desist letter to an artist; The Hermès legal team also consistently stated that Rothschild is a brand himself, in the sense that he was creating a community within the industry.
The Birkin was named after English-French actress Jane Birkin when she mentioned the necessity for such a large luxury handbag to a Hermès executive during an international flight in 1984. Hermès reportedly sells more than $100 million in Birkin bags every year since launch, and the product, which retails for an upwards of more than tens of thousands of dollars each with some even a million, is Hermès’ best-selling item among the many that the luxury house makes. Each bag takes a full day of effort by one craftsperson from the Hermès team.
Header image: Examples of ‘MetaBirkins’, courtesy of Mason Rothschild