We have recently seen how even the most unexpected characters out there are jumping on the non-fungible token (NFT) bandwagon. But the NFT bandwagon is also attracting legal cases based on copyright and dilution infringements. In the last few days, for example, there has been the case of Hermès suing American artist Mason Rothschild over NFTs inspired by the French luxury house's famous Birkin bags.
In May 2021 Rothschild launched a single "Baby Birkin" NFT in collaboration with Eric Ramirez. The NFT consisted in the animation of a 40-week-old fetus growing in a transparent Hermès' Birkin bag, launched on the curated social and shopping platform Basic.Space and sold for about $47,000. In that case Hermès didn't contact the authors to complain about the NFT as that was just a one-off.
A few months later, in November 2021, Mason Rothschild launched instead 100 "MetaBirkin" NFTs and an Instagram account linked to the project: the artist's MetaBirkins are essentially Hermès' Birkin bags reinvented in bright coloured fuzzy faux fur. Some of them are also inspired by artworks by Van Gogh, Goya, Dali, Leonardo da Vinci, Michelangelo, Hokusai, Twombly, Rothko and Maurizio Cattelan. The NFTs were launched and sold on the OpenSea platform.
A month later Rothschild received a cease and desist letter from Hermès. On his Instagram page the artist wrote: "The First Amendment gives me every right to create art based on my interpretations of the world around me (…) MetaBirkins is a playful abstraction of an existing fashion-culture landmark. I re-interpreted the form, materiality and name of a known cultural touchpoint. MetaBirkins are also a commentary on fashion’s history of animal cruelty and its current embrace of fur-free initiatives and alternative textiles."
The artist also sent a message to OpenSea, as the latter agreed with Hermès request and removed the MetaBirkins from its platform (Rothschild started selling them on Rarible, another NFT platform).
After receiving Hermès' letter, the artist added a disclaimer on his site stating: "We are not affiliated, associated, authorized, endorsed by, or in any way officially connected with HERMÈS, or any of its subsidiaries or its affiliates. The official HERMÈS website can be found at www.Hermès.com."
Yet the saga continued with a trademark lawsuit (Hermès International et al. v. Mason Rothschild), filed by the French luxury company. Rothschild is currently accused of trademark infringement, false designation of origin, trademark dilution, cybersquatting, and injury to business reputation and dilution under New York General Business Law.
Rothschild took again to Instagram to explain that his lawyers at Lex Lumina PLLC highlighted that the First Amendment in the US Constitution gives him the right to make and sell art depicting Birkin bags, "just as it gave Andy Warhol the right to make and sell art depicting Campbell's soup cans."
That's an interesting example, but maybe that doesn't apply to him: Warhol was sued for other works that he appropriated such as the flower photograph by Patricia Caulfield, but Campbell's was instead happy to see their product on the walls of museums and collectors' homes. Warhol did not seek permission to use the cans from the soup company as Campbell's Soup artworks were seen as non-infringing because it was clear to the public that it would have been unlikely for the company to sponsor paintings. The use of the cans remained in the artistic realm and Warhol didn't do commercial products such as T-shirts, so Campbell didn't complain.
Now there are different issues to consider when it comes to the Hermès / Rothschild case. The French luxury house accused Rothschild of trying to get rich by appropriating the name of its famous bag, stating: "Defendant is a digital speculator who is seeking to get rich quick by appropriating the brand METABIRKINS for use in creating, marketing, selling, and facilitating the exchange of digital assets known as non-fungible tokens ('NFTs'). Defendant's METABIRKINS brand simply rips off Hermès' famous BIRKIN trademark by adding the generic prefix 'meta' to the famous trademark BIRKIN. 'Meta' and 'metaverse' refer to virtual worlds and economies where digital assets such as NFTs can be sold and traded."
In favour of Hermès you can argue that while consumers may have been aware of the distinction between Campbell's soup and paintings representing a can of Campbell's soup, the Hermès / Rothschild case may be more complex as nowadays we all hear about this or that collaboration between an artist and a fashion house, so some consumers may genuinely believe this is an official partnership. Besides, Rothschild added a disclaimer on his page, but he didn't add the disclaimer on any of the other channels selling or promoting his NFTs.
As stated in Hermès' claim, the Defendant's activities, "create the false and misleading impression that Defendant is sanctioned, assigned or authorized by Hermès to use the BIRKIN Mark to advertise, manufacture, distribute, appraise, offer for sale or sell infringing products bearing the BIRKIN Mark when Defendant is not so authorized."
The prices of the NFTs contributes to generate confusion: a Birkin handbag is an exclusive piece of luxury that can be bought only by people on a mysterious waiting list. The bag is extremely expensive going from $9,000 to hundreds of thousands of dollars and even millions, as proved by the Birkin bags you spot at auctions (Birkins current available from Sotheby's reach $65,000).
Besides, while Rothschild mentions Freedom of Expression to use the name MetaBirkin, he was very annoyed when other people took his idea and started producing "fake MetaBirkin", that had him complain about possible infringements of "his" copyright.
Rothschild may have appealed to parody if the project aimed at satirising fashion or art, but he stated he had more serious intents and claimed that the project was a critique of the fashion system as well.
Maybe a safer way out for Rothschild, apart from pointing out the differences (the material - faux fur and fur patterns never used in Birkin bags) would be to insist on the "metaverse" aspect of his project: Hermès and other fashion companies are registered in specific fields, they can sell perfumes, accessories, garments and in some cases home décor items. But most of them aren't registered to sell digital products in the metaverse. Birkin is a name registered indeed in connection with leather goods, and not in connection with virtual products.
So the most important aspect of this case is if the court establishes that, to be able to prove a possible infringement of copyright, Hermès should be registered as producing also digital products (or do specific rights automatically extend to the digital space and the metaverse, so that it will not be necessary to register digital designs separately?)
As things stand the situation may be further complicated: Hermès is seeking monetary damages, including Rothschild’s profits (according to OpenSea that amounts to over 200 Ethereum, around $900,000) and wants Rothschild to transfer the MetaBirkins.com domain to it and to "deliver up for destruction to Hermès all unauthorized products and advertisements in his possession or under his control bearing any of Hermès' Federally Registered Trademarks or any simulation, reproduction, counterfeit, copy or colorable imitation."
But NFTs are stored on the blockchain where records cannot be altered once they are entered; and if an NFT of a Birkin that was sold became inaccessible, the individual owners of the allegedly infringing NFTs would be damaged (and will Hermès also end up going after them? and is it actually legal to go after the people who bought a MetaBirkin NFT, if the non-fungible token in question is not actually a picture of a bag infringing someone's copyright, but a smart contract and lines of code on the blockchain?). So there is a lot to be decided by the court here, besides, what may happen if a contemporary artist that Rothschild took inspiration from for one of his Birkins - say Cattelan - or if a museum preserving a painting Rothschild moved from for one of his bags decided also to sue?
What could have been the best solution? A collaboration. After all the MetaBirkins look cool enough to be desirable, at times cooler than original Birkin bags, and Hermès isn't at the moment producing any NFTs nor virtual accessories.
In previous posts we have looked at bootlegged designs that are more desirable than original pieces and at fashion houses ending up collaborating with people that only a few decades ago they would have sued (think Dapper Dan).
More recently we saw Los Angeles-based streetwear brand Cloney, that usually produces parody designs, releasing a Covid-19 vaccine inspired black hoodie with the trademark Valentino "V" signature logo accompanied by the word "Vaccinated" in Valentino red. Valentino Creative Director Pierpaolo Piccioli bought five hoodies, kept one for himself and gifted the others to friends. Then, humoured by the design and realising its potential, Piccioli decided to actually contact the brand's founder, Duke Christian George III, but not to sue him. Together they reached indeed an agreement, turned the hoodie into a Valentino x Cloney collaboration and produced the same hoodies featuring both logos (100% of the profits from the project were donated to UNICEF to support its work with the World Health Organization's global COVAX program).
Hermès may have arranged a similar solution rather than getting angry at not having thought about such an idea before Rothschild. Maybe that was what Rothschild was hoping for, attracting the attention of the luxury fashion house with an unsolicited unofficial project that may have scored him a proper collaboration, something that didn't happen.
The case teaches us that, while artists should maybe be more careful and aware of copyright issues, companies should also realise that artists, independent designers and bootleggers quite often have better ideas than their own teams and that collaborating with them may be a better solution than starting complex litigation procedures.
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