Hermes v. art

Birkins v. MetaBirkins: Art, Trademarks and Free Speech

Over the last 12 months alone, it seems like everyone and their cousin is trying to get in on the NFT hype in some form or another. While many of these projects won’t last beyond the bubble, they are helping to give us a better sense of what the landscape in terms of new opportunities for creative expression and commerce might look like with Web3.

Digital fashion in particular has been making significant Metaverse inroads and what’s certainly clear is that we’re still in the early stages where user experiences are mediocre at best and early attempts have been more gimmicky than delivering utility. You can read more about that my experience attending the inaugural Metaverse Fashion Week here.

While the unknown can be exciting, it’s also creates uncertainty, especially among fashion brands who are still trying to understand web3 let alone formulate a strategy. The suit filed by Hèrmes earlier this year against the artist behind the ‘MetaBirkins’ NFT project is probably a good example of this process of evolution for brands going in reverse – where a brand is forced into action in order to protect and defend their offline brand in some way before they’ve even entered a space.

The waiting list for Birkins apparently tripled after this 2001 episode of Sex and the City.

The backstory

In December 2021 during Art Basel in Miami, artist Mason Rothschild dropped ‘MetaBirkins‘, a collection of 100 NFTs depicting furry interpretations of the Hèrmes ultra-exclusive handbag in “one-of-a-kind contemporary colors and graphic executions”.

Meta Birkins
Some Meta Birkins. Checkout the other 92 styles on LooksRare here.

Rothschild says he was inspired by the acceleration of fashion’s “fur-free” initiatives and subsequent embrace of ethical alternative textiles. He told Yahoo Finance in an interview back in December:

“There’s nothing more iconic than the Hèrmes Birkin bag and I wanted to see this as an experiment to see if I could create that same kind of illusion that it has in real life as a digital commodity.”

Mason Rothschild to Yahoo Finance, Dec 2021

(As a side bar on the use of “fur-free”, I thought this was an interesting choice given Birkins are typically made from various type of leather but almost never in actual animal fur.)

The launch garnered a lot of attention with the initial sale grossing over a million dollars. The secondary market also showed a lot of action with some flipped for upwards of 25 ETH. Some news outlets had originally reported that there was some kind of agreement with Hèrmes but this turned out to be false. MetaBirkins the project itself nor OpenSea, the NFT exchange it debuted on, had any agreement or discussions with Hèrmes prior to the launch.

L'Officiel Meta Birkin article
L’Officiel had reported on a partnership but so far there’s no evidence of this. It’s unclear if any of this information could have had an impact on collection sales.

Given the press and prices the NFTs were selling for I had serious doubts that Hèrmes would standby. The brand has trademarks both for the Birkin name and its shape. In the past, Hèrmes has sued various companies for selling inexpensive duplicates of its bag, arguing that imitators were taking unfair advantage of the bag’s fame and reputation. In 2012, Hèrmes was awarded $100 million in damages via a handful of websites selling counterfeit Hèrmes products.

I think it’s worth noting that in May of 2021, Mason Rothschild had actually debuted a single NFT also using the ‘Birkin’ name titled “Baby Birkin“. He described it as “an ironic nod to the iconic Birkin bag by Hèrmes” and features a spacey soundtrack with an animation of a fetus moving around within a transparent Birkin bag.

Baby Birkin NFT
The “Baby Birkin”, by Mason Rothschild and Eric Ramirez debuted on Basic.Space back in May 2021 and at last check was flipped for $47,000 USD.

This particular NFT originally sold for $23,500 but was then sold again to the highest bidder for a whopping $47,000 in December. As far as we know now there was no action taken by Hèrmes from this single NFT drop so while it’s possible that they just never heard about it, it would seem more likely that they were willing to give what they assumed would be a one-time deal a pass?

Fool me once…

We can only speculate about what Hèrmes knew or thought about the Baby Birkin debut but when the MetaBirkins project was moved off the OpenSea platform shortly after its launch, people began to wonder if something was up. Sure enough, on December 22nd, Rothschild posted this message on the MetaBirkins Instagram:

Based on this response one could foresee he had no plans to desist and on January 14, 2022, Hèrmes proceeded by filing their suit against Mason Rothschild, for among other claims, trademark infringement, trademark dilution, and cybersquatting.

What is cybersquatting? Registering domain names in bad faith (more here)

And in response to the filing, Rothschild again took to Instagram to share a message, staunchly defending his MetaBirkins project as art that should be protected under free speech just as Andy Warhol did with his silk screens of Campbell’s Soup cans.

Andy Warhol’s Campbell’s Soup Cans
Perhaps the most well-known images of American modern art. A series of 32 canvases depicting Campbell’s Soup cans by Andy Warhol, 1962.

And a couple of weeks later he made another post consisting of images from artists CJ Hendry and Barbara Segal who have also used the Birkin bag as inspiration in their art as if to say “hey Hermès’, FYI it’s not just me doing this”.

Shortly after Rothschild responded by filing a motion to dismiss the case for Hermès’ failure to state a claim, arguing that trademark infringement claims fail as a matter of law based on a test that came out of a 1989 case, Rogers v. Grimaldi, which established how to apply trademark rights to artistic works. This case finds that use of a trademark in a work of art is not an infringement as long as it satisfies two requirements:

  • Requirement #1: the name is artistically relevant to the work
  • Requirement #2 – the use of the trademark does not explicitly mislead as to the source or content of the work

Unfortunately for Rothschild the request was dismissed with Rothschild’s having to eat some of his own words. In earlier interviews and statements he claimed that MetaBirkins were intended as “a tribute to Hèrmes’ most famous handbag, the Birkin,” 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.” Thus, although the artistic relevance bar is low, the court still didn’t believe he satisfied it.

But even if Rothschild had won on the first requirement, the court found that Hermès sufficiently argued that the use of their trademark in the title was explicitly misleading and could lead someone to believe “MetaBirkins” to be associated with the Hermès brand. However, because no discovery had yet taken place, “the court may not resolve these factual disputes at the motion to dismiss stage” according to Judge Jed S. Rackoff’s response.

So at this point, Hermès’ allegations seem to be enough to allow the case to proceed to a more formal discovery where each side will get to ask and answer written questions, sit for depositions, produce documents, supporting evidence etc.

I think the simple summary of the issue and what the court will need to answer is…was Rothschild was selling a commercial product and used the Birkin trademark to exploit the mark’s popularity? Or, was he selling non-commercial art (a non-commercial product) that just happens to use the Birkin name as part of the title which would be protected under free speech?

The case continues

It’s clearly game-on, and whatever unfolds as part of this case will offer valuable insight into how courts may evaluate NTF and Metaverse-related trademark claims. It will also see what balance is struck between trademark protection and First Amendment claims. This should also be a message to digital creators and artists in general that claiming first amendment rights is not a blank check to use the IP of others.

As of this writing you can see all 100 MetaBirkins on LooksRare here. See all docket entries for the case Hermès International v. Rothschild on Court Listener here. The MetaBirkins website is still live here, you can also check them out on Instagram and Twitter.

Will certainly be following this case as it moves ahead. As always would love to hear your take and thoughts, email me anytime tara[at]appitysnacks.com.


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