Hermès, the renowned luxury brand, is gearing up for a significant development in the ongoing legal battle with American digital artist Mason Rothschild. The dispute, centered around the concept of intellectual property, is slated to commence on January 30 in a US court, where both parties will present their arguments.
To provide context, in early 2021, Mason Rothschild collaborated with painter Eric Ramirez to create the “Baby Birkin,” an NFT (non-fungible token) inspired by Hermès’ iconic handbag. Subsequently, Rothschild released a series of 100 NFTs called “MetaBirkins,” featuring different variations of the famous accessory. These actions drew the ire of Hermès, who alleged that Rothschild had infringed upon their brand image and intellectual property. On the other hand, Rothschild defended his right to freedom of expression.
Hermès filed a lawsuit against Rothschild in a New York court last year, seeking the cessation of the project, retrieval of the domain name, and a payment of damages. The claimed damages were particularly tied to the sale of the NFTs, which purportedly generated over $1.1 million.
Initially, Hermès denied venturing into the world of NFTs. However, it now appears that their stance has shifted. Despite previously referring to NFTs as mere “communication tools” without prioritizing them, Hermès allegedly filed a trademark application with the US Patent and Trademark Office last summer. This application indicates the brand’s intent to explore metaverse and NFT applications.
The outcome of this legal battle could have wider implications for intellectual property matters within virtual realms. Merav Griguer, an attorney specializing in International Privacy & Data Protection, emphasized the need for protection and regulation of virtual creations and artworks in metaverses. Platforms will have to update their terms and conditions to clarify ownership of rights, while trademark holders must adapt their brand registrations and descriptions to metaverses. Additionally, combating counterfeiting will necessitate surveillance actions and obtaining prior authorization from trademark holders for any use of their brand or products in metaverses. Ultimately, regulating intellectual property rights, modes of exploitation, rights assignments, and license scope in contracts will be crucial.
The verdict of this trial is expected to be delivered within a few months.
Useful links:
1. US Patent and Trademark Office
2. Bird&Bird (law firm mentioned in the article)
