French luxury brand Hermes wins court battle in trademark infringement lawsuit

French luxury brand Hermes wins court battle in trademark infringement lawsuit

French luxury design house Hermes has won a lawsuit against Mason Rothschild, the artist behind the Metabirkins non-fungible token (NFT) collection which features digital depictions of Hermes' popular Birkin bags.

Hermes is known for being very protective of their brand. They have a reputation for producing high-quality, handcrafted products and they are widely recognised as one of the leading luxury brands in the world. The Birkin bag is one of their most iconic products, and it has become highly sought after by collectors and fashion enthusiasts alike.

Rothschild created the Metabirkins NFT collection in 2021, which he described as "a collection of 100 unique NFTs created with faux fur in a range of contemporary colour and graphic executions."

Hermes complained and sued the artist early last year for trademark infringement.

Rothschild argued that NFTs should be covered under the First Amendment of the US Constitution, which protects freedom of speech and expression, which is novel and somewhat controversial one.

His argument centred on the theme that NFTs are a form of art, and as such, they should be protected under the First Amendment. By comparison to Warhol's work, Rothschild argued that the Metabirkins NFTs are a form of commentary on consumer culture and the status associated with luxury goods, much like Warhol's soup cans and Coca-Cola bottles were a commentary on the prevalence of consumer goods in American society.

Hermes' lawyers accused Rothschild of stealing the goodwill in Hermes' famous intellectual property to create and sell his own line of products.

They further argued that customers are likely to confuse Metabirkins NFTs with genuine Hermes products and said the Metabirkins URL is too similar to the one used by the luxury brand.

Oren Warshavsky, a lawyer representing Hermes said in court: "The reason for these sales was the Birkin name."

After deliberating for two days, a New York jury delivered a verdict on February 8, stating that they "found the defendant liable for trademark infringement" and "trademark dilution."

The jury also found that "the First Amendment protection does not bar liability." The jury then awarded Hermes $133,000 in damages — $110,000 for trademark infringement and $23,000 for cybersquatting.