Hermès NFT Trademark Case Will Set a New Standard in Digital Art and Fashion

What’s BIRKIN?

Hermès is a well-known designer and manufacturer of handbags, apparel, and scarves as well as fashion accessories and home furnishings. However, Hermès is best known for its iconic BIRKIN handbag. This unique design was created in 1984 and sold first in the U.S. in 1987.

A physical BIRKIN handbag can be purchased for an average of $20,000 but has been sold for as much as $300,000. This makes the BIRKIN trademark & trade dress highly valuable.

What is the Legal?

A plaintiff must prove that it has (1) a trademark that is protected under the Lanham Act, the federal statute that governs trademarks; and (2) that Rothschild, the defendant, in this case, has used the same or similar mark in commerce to sell or advertise goods or services.

The core of any trademark infringement case is “the likelihood of confusion” when the mark is first encountered by consumers. This will determine whether they assume that the product/service it represents is associated to a product/service with a similar name.

The Rogers test has been used by the 2nd circuit to determine whether third-party trademarks are being used in expressive works. In this case, the NFT was in violation of the Lanham Act. The Rogers case in 1989, first inspired this test. it was later adopted by the 9th Circuit Mattel, Inc. (the “Barbie Girl”) case.

What’s Hermès Talking About?

Hermès argues that, based on the strength of the BIRKIN trademark, Rothschild’s venture gave consumers a false identification of the origin and diluted the trademark brand in the fashion, luxury, and digital art spaces.

Here’s a quick summary of Hermès’ complaint:

First. The digital artist didn’t have Hermès’ authorization to use its trademark or trade dress when he announced the MetaBirkin project at Art Basel Miami in December.

Second Rothschild clearly made a profit from the illegal use of the Hermès trademark. He launched over 100 digital collectibles using the MetaBirkins Mark and earned significant amounts from the sale and renewal of NFTs.