Hermès confirms trade mark win in MetaBirkins case

New developments occurred last week in the high-profile Hermès vs MetaBirkins case, which we reported on several times in the past months.

In a nutshell, in early 2022, the French company had sued the American artist Mason Rothschild for creating and commercialising around 100 NFTs extremely similar to its notorious “Birkin” bag. Rothschild’s NFTs, called “MetaBirkins”, had turned out to be very successful in the Metaverse and had been sold for the equivalent of thousands of euros each. As a consequence, Hermès had sued the artist for trade mark infringement and cybersquatting, on the grounds that he was using the name “Birkin” and had registered and was using the domain name “MetaBirkins.com”, obtaining an economic revenue and taking unfair advantage of the reputation of the luxury brand.

In February this year, after a 6-day trial, a US jury found that Rothschild had indeed infringed Hermès’ trade mark. Hermès was consequently awarded $133,000 in damages.

However, despite the jury’s verdict, Rothschild continued to market its MetaBirkin NFTs. For this reason, Hermès filed a new petition in March, asking the court for a permanent ban over these activities. Hermès also requested that the remaining NFTs be turned over along with any post-trial profits.

Rothschild’s defence argued once again (as it did during the first trial in February) that its activities were protected under the first amendment of the US Constitution (protecting free speech and in particular artistic expression).

On Friday last week, a US federal judge granted Hermès’ request and issued a permanent injunction barring Rothschild from marketing the MetaBirkin NFTs any longer. The judge insisted on the fact that such an injunction was necessary as Rothschild’s activities were likely to be confusing consumers and hence causing irreparable harm to Hermès. In line with what was said in the previous trial, the judge further confirmed that nothing in the first amendment allowed Rothschild to give the impression that the NFTs were coming from or endorsed by Hermès itself. The judge however decided against ordering that Rothschild transfer the tokens.

The MetaBirkins saga is one of the very first cases to reach the courts with issues linked to IP infringement in the Metaverse. It will likely not be the last, so we will keep an eye out for further developments in this field!