MetaBirkin on trial: Hermès v Rothschild

A pivotal IP trial has just begun in the US concerning IP rights in non-fungible tokens (NFTs) related to French fashion house Hermès’ iconic Birkin bag.

This week a US court is considering whether trade mark and other IP rights in Hermès’ Birkin tote bag have been infringed by artist Mason Rothschild’s “MetaBirkin” NFT collection.

Hermès is the French luxury fashion house behind the iconic Birkin bag. The Birkin bag has been considered as a beacon of prestige since launching in 1984, costing anywhere between £9,000 to £250,000.

Rothschild has minted NFTs over digital images in the style of Hermès’ Birkin bag and has named them “MetaBirkins”. Whilst the Birkin is made from a range of leathers, the MetaBirkins are covered in “faux fur” (see the full collection here). As unique digital assets, successful NFTs can trade for significant value. Some MetaBirkins, for example, have resold for over $20,000.

Many fashion brands are embracing NFTs as a new stream of revenue, and are seeking to protect their rights in relation to these unique and scarce digital assets. The present case brings one aspect of this to a head. Hermès argues that the MetaBirkin infringes its trade mark for Birkin and rides on the reputation of the Birkin in order to generate value.

Rothschild has sought to defend its MetaBirkin by drawing parallels with Warhol's iconic Campbell’s Soup Cans, whereby Warhol famously used images of Campbell’s soup cans in its work without authorisation. Whilst it is reported that on day 1 of the trial (yesterday) the court dismissed Rothschild’s expert witness in support of this argument, it will be interesting to see how the court determines judgment on this issue when it is handed down.

This case is also important as it will tell us, in the US at least, whether rights which protect physical assets will also protect assets in the virtual world.

As the trial is currently live in the US, we will provide an update on the outcome of this case in due course.