I recently read an article that there is no longer a wait list at Hermès for the coveted Birkin bag. The Hermès Birkin bag, created in 1984 and inspired by British actress Jane Birkin who desired a bag suitable for a young mom, is widely known as one of the most difficult and most expensive handbags to purchase. Well, if you cannot find a Birkin, there is another option for you – the MetaBirkins. The MetaBirkins are offered as NFTs, a non-fungible token, used to purchase digital art (and other content) with cryptocurrency. And it has been causing quite a stir since its launch.
You will recall we previously reported on NFTs implicated in a copyright case involving music that also received a lot of buzz. Now it seems NFTs are infiltrating the trademark and fashion worlds.
Mason Rothschild, a California artist, has created and offered for sale depictions of the famous bag as NFTs. The METABIRKINS NFT is just one of the more recent in a series of fashion NFT debuts. NFTs are popping up for a variety of luxury brands, including Gucci, Louis Vuitton, Burberry, and Coach. With luxury brands launching their own NFTs, is there a reasonable claim of likelihood of confusion if designers not affiliated with those brands launch their own NFTs?
Hermès certainly thinks so. Just last week, Hermès International and Hermès of Paris, Inc. filed suit in the Southern District of New York against Mason Rothschild for trademark infringement and trademark dilution. In the Complaint, Hermès details the origin and fame of the Birkin handbag. Hermès owns a US trademark for the word BIRKIN and trade dress rights in the handbag design. The Complaint, among other claims, alleges trademark infringement of the BIRKIN trademark and unfair competition based on Rothschild’s sale and advertising of the METABIRKINS NFTs and a cybersquatting claim relating to the metabirkins.com website. The Complaint includes a trademark dilution claim alleging that Rothschild’s use of the METABIRKINS trademark dilutes the distinctive quality of the BIRKIN trademark. Mason Rothschild suggests on Instagram that he will put up a fight.
We will closely follow this case as it will surely have an impact on the NFT and fashion worlds. Indeed, we anticipate various intellectual property considerations that will arise from the emerging and evolving NFT space.
Disclaimer: Norris McLaughlin does not represent the parties identified in this post.