Blockchain and digital assets trade association the Chamber of Digital Commerce (CDC) filed an amicus curiae brief on February 9 in support of French design house Hermès in the company’s landmark MetaBirkins case.
Hermés, designer of the legendary Birkin bag, is embroiled in a controversial legal battle that could very well shape how trademarks are applied to digital assets in the Metaverse and beyond.
“Setting a precedent for the entire digital economy”
The luxury goods company has formally sued an artist named Mason Rothschild (real name Sonny Estival) over his creation of “MetaBirkins” – non-fungible tokens (NFTs) featuring images of Birkin bags that Rothschild was able to sell for tens of thousands of dollars.
“Since the Chamber of Digital Commerce stands behind Hermès in this case, we are not only advocating for the rights of one brand,” said an amicus curiae brief from the trade association. “We are setting a precedent for the entire digital economy and ensuring that the trademarks that have become synonymous with trust and quality in the physical world carry the same weight in the digital world.”
Federal jury rules in favor of Hermès
Hermès won last week when a federal jury in Manhattan found Rothschild guilty of cybersquatting, brand dilution and violating the fashion house’s “Birkin” trademark. The ruling requires Rothschild to pay the company $133,000 and $23,000 for damages caused by cybersquatting.
A statement in response to: Hermès International, et al. v. Mason Rothschild. pic.twitter.com/pil6brfGTl
— MetaBirkins (@MetaBirkins) January 17, 2022
However, Rothschild has vowed to challenge the verdict, with his lead lawyer Rhett Millsap saying: “This is not the end of this case.”
“I do not make or sell counterfeit Birkin bags,” Rothschild said in a statement. “I have created artwork depicting imaginary fur-covered Birkin bags.”
The end of MetaBirkins?
Rothschild had initially argued that his work was mere artistry in the tradition of portraying brand images, comparing MetaBirkins to Andy Warhol’s celebrated Campbell’s soup cans.
The recent letter from the CDC refutes this argument, claiming that “Andy Warhol did not sell soup in a supermarket.”
The brief goes on to compare Hermès’ right to sell its own digital goods as comparable to NFTs from other brands, such as Tiffany & Co. or the Chicago Bulls. Furthermore, the trade association argued that Hermès’ already established brand identity gave MetaBirkins its value.
“It is the identifying characteristics associated with otherwise nameless and anonymous lines of computer code that allow these digital goods to be bought and sold online in similar ways to how physical goods are bought and sold online,” the letter said. “The fact that a company offers its goods in a digital space should not result in those products or that company receiving less brand protection than physical goods sold in the real world.”
At the time of publication, it is currently unclear whether or not an appeal has been filed.
