Véronique Piguet, a lawyer at the Paris Bar, shares her perspective on the case between luxury brand Hermès and digital artist Mason Rothschild, and poses the question of whether the outcome would have been different if the trial had taken place in France under French law.
The case revolves around the iconic Birkin bag, a product marketed by Hermès for nearly four decades. The bag’s origin story dates back to a flight where actress Jane Birkin sat next to the CEO of Hermès and expressed her desire for a perfect bag for mothers. The CEO challenged Birkin to design the bag herself, and thus the Birkin bag was born.
In January 2021, Mason Rothschild and Eric Ramirez created an NFT (non-fungible token) called “Baby Birkin,” which depicted a baby growing up inside the Hermès Birkin bag. According to Rothschild and Ramirez, the artwork was a nod to the bag’s cultural significance and its high demand in pop culture. This digital artwork was inspired by Andy Warhol’s famous paintings of Campbell soup cans.
Due to the success of “Baby Birkin,” Rothschild decided to create a series of 100 NFTs called “MetaBirkin,” each associated with a fictional fur handbag model that did not exist at Hermès. Rothschild claimed that this collection aimed to denounce animal mistreatment. In December 2021, he offered these MetaBirkin NFTs for sale on the OpenSea platform for over $10,000 each and launched the collection at the Miami Art Basel.
Hermès quickly responded by obtaining a cessation of sales from the OpenSea platform. However, the Rarible platform continued to offer the NFTs for sale, prompting Hermès to take the case to the Federal Court of New York on January 14, 2022. The trial, therefore, fell under American jurisdiction, and on February 8, 2023, the court ruled in favor of Hermès, ordering Rothschild to pay $133,000 in damages.
Hermès based its claims primarily on trademark law. The luxury brand has held a US trademark for “BIRKIN” in classes 16 (checkbook holders) and 18 (leather goods) since 2005. In August 2022, Hermès filed a new application to extend the trademark to cover virtual reality environments and NFTs.
The question is, what would have happened if the case was brought before a French judge? The MetaBirkins are still exhibited on the Rarible website, which is accessible from France. Since Hermès is the holder of a French trademark for “Birkin” in classes 16 and 18, they could have chosen to sue Rothschild in France and seek compensation for the damage caused in the country.
Under French law, renowned trademarks receive specific protection, even if the products or services are not similar to those covered by the trademark registration. As long as the distinctiveness or reputation of the trademark is exploited or harmed, the court can intervene. However, the use must be “in the course of trade” and for economic gain. Traditionally, French courts have considered the use of customer rallying signs in literary or artistic works as a freedom of creation and not unfair competition. The parody exception has also been used to argue against infringement.
The MetaBirkins directly reference Hermès’ products and have reached a cumulative price of nearly $450,000. It can be questioned whether this constitutes a use in the course of trade. The situation may differ when it comes to the digital artwork “Baby Birkin,” which serves a genuine artistic purpose. The MetaBirkins, on the other hand, could be seen as variations of the Hermès bag in the web3 universe, a domain that Hermès and other fashion industry players are likely to explore.
Apart from the risk of confusion for the public, attributing the MetaBirkin bags to Hermès, it could be argued that the unauthorized commercialization of these bags as NFTs amounts to profiting from the brand’s reputation and Hermès’ creative and investment efforts. This argument may find acceptance in French courts. It is worth noting that Hermès did not make any claims against the digital artwork “Baby Birkin,” which could allow for a distinction between criticisms targeting the unauthorized commercialization of MetaBirkins.
Ultimately, the outcome in France would likely be the same as the verdict in the US. The American jurors did not see Rothschild’s NFTs as art, as evidenced by the court’s decision on February 8, 2023.
Useful links:
1. Hermès official website
2. Rarible platform
