There’s nowhere Hermès won’t go to defend its signature Birkin bag — including the virtual world.
The French luxury brand filed suit in a New York federal court on Friday against Mason Rothschild, creator of MetaBirkins NFTs, to allege trademark infringement and dilution. The digital collection featured 100 virtual bags resembling furry versions of Hermès’ signature Birkin.
The complaint, submitted to New York’s Southern District Court, described Rothschild as “a digital speculator” with a get-rich-quick scheme to “rip off Hermès’ famous Birkin trademark by adding the generic prefix ‘meta.’”
Hermès is not the first to sue over NFTs. A May 2021 lawsuit against Dapper Labs alleged that sales on its NBA Top Shot platform violated securities laws. Miramax accused Quentin Tarantino of breaking copyright in November 2021, in a legal tussle over “Pulp Fiction” NFTs that the filmmaker ultimately ignored on Monday, when he released the first of several chapters.
But as the first major luxury fashion house to tie NFTs to trademark infringement, the maison could deliver a landmark case for the industry.
The MetaBirkins creator responded to the lawsuit via Instagram on Monday, arguing that his collection amounts to art. “I am not creating or selling fake Birkin bags,” he wrote. “I’ve made art works that depict imaginary, fur-covered Birkin bags.
“My lawyers at Lex Lumina PLLC put it well when they said that the First Amendment gives me the right to make and sell art that depicts Birkin bags, just as it gave Andy Warhol the right to make and sell art depicting Campbell’s soup cans.”
New York-based Lex Lumina does not yet have a track record to speak of, since it just launched last fall as a boutique firm specializing in intellectual property. Cofounder Chris Sprigman, a New York University professor, author and attorney, has deep experience in intellectual property law, antitrust and comparative constitutional law and has appeared in the media to discuss issues like fashion law or technology and creative commerce.
It’s not clear when Rothschild hired the firm, but the need looked apparent when the fashion house issued a cease-and-desist letter on Dec. 16. At the time, Hermès also notified OpenSea, the NFT platform that offered the collection.
Earlier reports indicated that the marketplace pulled the items, although WWD spotted listings under the MetaBirkins name briefly on Monday. They were taken down later that afternoon. According to the filing, Rothschild ironically complained about “counterfeit” MetaBirkins, so the listings could have been posted by someone else.
In the real world, genuine Birkin bags can run anywhere from $9,000 to $500,000, and resellers like The RealReal saw interest grow during the pandemic, particularly among Millennials.
The demand apparently translates to virtual goods — or, if Rothschild’s argument has any merit, digital art. In December, he sold his first MetaBirkin for 10 Ethereum, the equivalent of more than $40,000, and moved some 600,000 NFTs in five days. This followed a previous Baby Birkin NFT sale in May, which sold for 5.5 Ethereum, roughly more than $23,000. Then it resold to a collector for $42,000.
The current collection may be stymied, but not blocked. According to Metabirkin.com, sales remain active on alternate sites Rarible, Zora and LooksRare.
For a brief time, it seemed that negotiation might be possible, at least according to Rothschild. “We told them that we believed that the dispute could be resolved through an informal conversation between me and an Hermès representative. Hermès chose instead to break off negotiations and sue me,” he added on Instagram.
But the company could be less worried about what he’s already done than what he does next.
In the filing, Hermès wrote, “He encourages others to create ‘MetaBirkins’ with his ‘Build-a-MetaBirkin’ contest, which further damages and dilutes the Birkin Mark. He has announced to his followers his plans to develop his own ‘decentralized NF exchange’ under the MetaBirkins brand.”
Essentially, it believes he’s trying to build a whole marketplace, exchange and community. It also doesn’t buy his “artistic license” rationale. The complaint distinguishes between exercising artistic creativity and using a trademark “in a manner calculated to mislead consumers.…He is stealing the goodwill in Hermès’ famous intellectual property to create and sell his own line of products.”
Debates over artistic license and trademarks have raged for years, both online and offline. Now it’s heading to the virtual world via exclusive digital fashion, which is untested territory.
The value in these types of NFTs lies in their ability to prove their own authenticity and ownership. Interest exploded last year across art, fashion and other categories, drawing millions for high-profile transactions. But the law hasn’t kept pace — even though ongoing demand for NFTs, intensifying hype and a rush of corporate and independent efforts look poised to drive a wave of lawsuits.
The gold rush around digital fashion may be underway, but this iteration is still in its infancy. From here, signs point to NFTs maturing in the metaverse. After all, if everyone will spend time in that new form of immersive internet, it’s not a stretch to believe they’ll want to dress their avatars or show off their virtual trophies. This is one way NFTs are expected to fuel metaversal commerce. At least eventually.
It’s worth noting that the sprawling metaverse envisioned by companies like Facebook’s Meta doesn’t exist yet. Someday, a massive, hyper-connected virtual 3D environment may come, but it’s likely 10 years away, if it arrives at all. Until then, the landscape remains a disjointed patchwork of separate platforms.
Fashion has been adapting to or even embracing the chaos. Brands have been striking partnerships with platforms like Roblox, Fortnite, Zepeto and others, while making long-term plans. Nike filed trademarks for “use online and in virtual worlds” in November, and others are weighing similar moves. Some companies have even launched entire metaverse-focused divisions, like Balenciaga and Diesel owner OTB Group, and many more have launched NFTs or will soon.
Hermès sees Rothschild’s effort as driven by metaverse ambitions, starting principally with the name and its widespread use on social media and e-commerce. The company believes he’s trying to replicate the Birkin bag’s real-world success and using the “MetaBirkins to brand all of his ‘metaverse’ business activities.”
Its confidence in filing the lawsuit is understandable. For years, the company has put up a ferocious and often successful defense of its products. In 2008, a judge sided with the luxury fashion company over eBay, finding that the site didn’t do enough to block sales of fakes on its platform. Last year, a Paris court convicted 23 counterfeiters with prison time and damages worth 10.4 million euros, or nearly $12 million.
In between, a 2012 ruling handed Hermès a major victory against 34 websites for peddling phony Birkins, Kelly bags and other items and granted $100 million in damages. But the company doesn’t always win. The same year, it also fought and lost a trademark battle in China.
Hermès now argues that its existing rights should cover the virtual world, or metaverse, as well. It remains to be seen if a judge will agree. There’s some legal debate over the issue, especially if the brand doesn’t actually do business there. But if the company prevails, it stands to collect damages, including all MetaBirkins profit, and end Rothschild’s use of the Birkin name or likeness as part of any products or services without express authorization.
But whether it wins or loses, the case may help define fashion’s claim in the digital future.