• by Steve Ellwanger , February 21, 2023

 
Image above from the Instagram account metabirkins

In what could set a precedent for trademark infringement involving non-fungible tokens (NFTs), French luxury brand Hermes has prevailed in a lawsuit against a man who used images of the company’s iconic Birkin handbags in a series of NFTs.

On Feb. 8, the U.S. District Court for the Southern District of New York ordered Mason Rothschil (whose real name is Sonny Estival) to pay Hermes $133,000 for the unauthorized use of NFTs—which are digital images that can be purchased and sold as investments.

According to the suit, in late 2021 Rothschild created digital images of fake, fur-covered versions of Birkin handbags, labeled them MetaBirkins and sold them as NFTs.

Rothschild described them as “a tribute” to Birkin handbags and said real ones double as “an investment or store of value.”

The suit alleged that people on Instagram were confused because they thought Hermes was affiliated with MetaBirkins and that “similar confusion” was expressed in the media.

“For example, the magazines Elle and L'Officiel and the New York Post have all mistakenly reported that the ‘MetaBirkins’ NFTs were unveiled by Hermes in partnership with Rothschild,” the suit stated.

In an Instagram post in January of 2022, Rothschild told MetaBirkin followers that Hermes was suing him but said the claims were “groundless and we look forward to defeating those claims in court and helping to set a precedent.”

His justification was that he used artistic commentary to depict Birkin handbags and therefore was protected by the First Amendment.

The jury decided that Rothschild infringed on Hermes’ Birkin trademark and that such infringement is not entitled to First Amendment protection.

“The verdict sends a big signal to established brands and creators alike that trademarks are still protectable in the new digital economy,” the Davis+Gilbert law firm noted in an analysis of the rulings.

“Brands should monitor whether and how their trademarks are being used in new technologies and know that such use is still subject to traditional principals of trademark law.

“Creators should be aware of the limits of First Amendment protection, particularly when dealing with well-known trademarks.”

Rothschild could not be reached for comment.

According to Hermes, since 1986 it has sold over $1 billion worth of Birkin handbags in the United States—including more than $100 million dollars' worth in the past 10 years.