By: Katie Simers
Rory: Logan’s very nice. He bought me this terrific gift just completely out of the blue.
Emily: Is that so?
Rory: Totally unexpected. It’s called a Birkin bag.
Emily: A Birkin bag? Oh, my God. A Birkin bag.
Rory: You’ve heard of it?
Emily: Of course. That’s a very nice purse.
Rory: Oh, maybe I shouldn’t use it.
Emily: Oh, no. A Birkin bag is meant to be used and seen.
Rory: I had no idea.
Emily: Well, well, well, a Birkin bag. A Birkin bag. A Birkin bag for Rory.
Emily: I’m just saying. Richard never bought me a Birkin bag. Oh, this is exciting!
Rory: I guess it is.
Emily: A Birkin bag. I’m gonna remember this day.
“Welcome to the Doll House.” Gilmore Girls, created by Daniel Palladino & Amy Sherman-Palladino (Season 6; Episode 6) 2005. For some of us, this episode of Gilmore Girls was the first time we had ever heard of a Birkin bag. Or perhaps we recall hearing about a Hermès briefcase in Beyonce’s “Upgrade U” from 2006. But no matter how you first learned of the brand, most would qualify it in one word: iconic. These leather handbags typically sell for tens of thousands of dollars, with company sales exceeding $100 million in the last ten years, according to a court filing by Hermès. In 1984, Hermès created the luxury handbags which are named after the actress Jane Birkin. Reports say that they take a specialized artist a minimum of eighteen hours to make each bag by hand.
In February of 2023, in one of the first U.S. Trademark trials of its kind to consider intellectual property infringement by non-fungible tokens (“NFTs”), a federal jury for the Southern District of New York decided that an artist’s renditions of the Hermès Birkin bag as an NFT violated the company’s rights under U.S. Trademark laws. The case stems from Mason Rothschild’s (“Rothschild”) furry rendition of the handbags as “MetaBirkin” NFTs. Rothschild, an artist, created one hundred NFTs associated with images of the Birkin bags covered in fur, rather than the bag’s traditional leather. Rothschild’s NFTs contained bright colors and designs. He had planned to create and sell 1,000 of his MetaBirkins, but as of the time of the filing, he had only released a hundred of his designs. Rothschild then offered his NFTs at a Miami art fair in December, 2021, with over $1 million worth of the NFTs traded by early January 2022. Each NFT was $450, and Rothschild earned 7.5% of the secondary sales, equaling approximately $125,000 total from initial and secondary sales and royalties. This usage was of course, unauthorized by Hermès.
Rothschild argued that his NFTs were art and are an “ironic nod” to the famous French luxury brand, comparable to Andy Warhol’s paintings of Campbell’s Soup, which were protected under the First Amendment. Hermès, however, argued that the only reason the NFTs were purchased was because of the Birkin name, which implied a nonexistent connection to the luxury label, or at best, consumer confusion over whether the NFTs were connected to the brand. At trial, an expert for Hermès indicated that a study found a net confusion rate among consumers of 18.7%. Hermès also argued that Rothschild was diluting its trademark and brand with unaffiliated virtual goods.
Ultimately, Hermès was awarded $133,000 in damages for trademark infringement, dilution, and cybersquatting. The jury concluded that Rothschild’s NFTs were not art, where appropriation may be more protected, but rather, infringement of the brand’s handbags, more in line with commodities which are subject to strict trademark laws, meant to prohibit copycats. Yet the case does not foreclose upon the idea that NFTs can be considered artwork under U.S. Trademark law. This was a fact specific inquiry where the differences between the official brand and the artist were subtle. In one of its filings, Hermès indicated it intended to expand into the NFT arena just as many other major brands, especially in fashion, are announcing the same. Hermès argued that to expand in this area, it felt the need to protect its interest or it would always be competing against Rothschild’s MetaBirkins.
If you find yourself with trademark questions or find yourself in a similar situation where another company or individual is causing confusion in the market for your consumers, please reach out to the Odom Law Group offices – we are ready and happy to assist you.
For more information, the case is Hermès International v. Rothschild, No. 22-CV-384 (JSR), 2023 WL 1458126, at *1 (S.D.N.Y. Feb. 2, 2023).
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