Trademark infringement has extended to the metaverse – with luxury brand Hermès of Paris battling digital artist Mason Rothschild in court over the creation and sale of nonfungible tokens (NFTs) that depict images resembling its hard-to-get Birkin bags.
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Rothschild, a Los Angeles-based artist and entrepreneur, took the stand on Wednesday. He was cross examined by Hermes attorney Oren Warshavsky. Hermes Birkin Bag on table and Rothchild NFT on screen. Artwork by Elizabeth Williams |
A trial over the alleged infringement of Hermès’ intellectual property began in Manhattan federal court this week, with the multibillion-US dollar corporation claiming the name of the NFTs – MetaBirkin – misled consumers into incorrectly believing they were affiliated with Hermès.
“Hermès brought the lawsuit because they thought it infringed and thought people would wrongly think Hermès was involved,” Oren Warshavsky told the jury in his opening statement. The sticky situation is made stickier because the company apparently has plans to join the metaverse as well, Warshavsky revealed.
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| Mason Rothschild on direct examination. Hermes Birkin bags on table and Rothchild NFT on screen Artwork by Elizabeth Williams |
Rothschild’s lawyer, Rhett Millsaps, told the jury that as long as the product is artistically relevant and doesn’t explicitly mislead consumers, then it’s protected under the First Amendment of the Constitution, guaranteeing freedom of expression.
Rothschild took the stand on Tuesday afternoon telling the jury he’s worked at various fashion store like Christian Dior and Saint Laurent and has done graphic design for local stores and individuals.
“I’ve been in the art space for awhile doing my own art and going to galleries,” Rothschild told jurors. “It’s always been a main staple of my life.”
He said he respected Hermès, though “maybe a bit less after the lawsuit.”
“I value fashion and art and I appreciate what they do,” he said.
Most of Rothschild’s projects make some kind of social commentary, Millsaps said. The MetaBirken NFT, he said, is about the luxury-consumer culture, and whether people would ascribe the same value to an NFT as they do to the actual product.
That’s unclear so far. Some of the NFTs, which Rothschild initially sold for US$450 each, have resold for tens of thousands of US dollars. The Baby Birkin NFT sold at an auction in May 2021 for US$23,500. That’s more than the US$8,500 Hermès Halzan 25 sells for on Madison Avenue Couture’s website, but still far less than the Hermès Birkin 25 Himalaya Niloticus Crocodile Diamond Encrusted Hardware – which is listed at US$500,000. The 25-centimetre Hermès bags are also known as Baby Birkins.
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| Hermes Bags on desk and Rothschild's Baby Birkin NFT on screen |
The Rothschild NFTs are designed with the same shape as the actual Hermès bag, but are covered with fur instead of leather and have some type of visual or pattern on them. The Baby Birkin NFT has a moving picture of a foetus inside the bag. Rothschild also proposed on social media a plan to recreate the designer bag’s famed horse keychain – which the company used as evidence to demonstrate the violation to Hermès’ trademark of not just the Birken name but its configuration, even though the plan was never implemented
The NFTs hurt Hermès’ ability to bring its own digital products into the metaverse, Nicolas Martin, Group General Counsel at Hermès who specializes in intellectual property, told the jury on Tuesday.
“If we want to bring our most iconic handbag to the digital market it’ll always be compared to MetaBirken,” he said. “We lost the opportunity of being first on the market, which is really impactful for Hermès.”
It’s not the first time Rothschild’s creations have landed him in trouble. He printed college logos on apparel and received a cease-and-desist order from one of the schools, Warshavsky said.
All artwork is copyright of Elizabeth Williams
