Is the Famous Birkin Brand Infringed by MetaBirkins?

Digital artist, Mason Rothschild, continues to create controversy with his unrelenting use of MetaBirkins NFTs despite the claims of Hermès for trademark infringement and dilution of its BIRKIN® trademark for handbags. 

Are MetaBirkins Infringing on the BIRKIN® Brand?

The increasingly popular use of NFT virtual goods akin to real world products has led to a wave of intellectual property litigation including claims of trademark infringement.  While artists such as Rothschild claim the use of “MetaBirkins” as a name to sell NFTs containing Birkin® look-alike bags is merely an artistic expression, owners of name brands are fighting back against such use claiming trademark infringement and dilution of their brands.

Hermès is a leading fashion icon known for its famous BIRKIN® luxury brand bags.  It is only natural that it would police against any third-party use of similar names for the sale of similar product and may be able to stop any such openly public use.  To protect the goodwill associated with building such well-known brand names, it is important that brand owners of famous marks regularly protect against third-party use that can tarnish and dilute their marks.  In this case, Hermès is dealing with an artist claiming first amendment rights in artistic expression and arguing fair use of the name MetaBirkins for NFTs said to mimic and express opinions of the BIRKIN® brand.  One claim has been that such use is analogous to Andy Warhol’s depiction of CAMPBELL’S® Soup cans in his art.  But, is it really the same thing?

MetaBirkins – Art of Purposeful Use for Consumer Confusion?

Although NFTs have been around for some time now, there is a vast population of consumers new to the concept that are just now looking to enter the virtual entertainment space, often looking for “things” that mimic real life and real-world goods and services.  Is it possible such consumers would be confused as to the origins of MetaBirkins?  With the Hermès trademark infringement lawsuit against such use, a court may answer that question if the case continues without settlement.  

The case is a very important case for leading brand owners as the answer to the infringement question can create additional controversy about rights in the “real world” versus the virtual space.  There is a trend by well-known brands to take a stake in the virtual world of goods and services to stop third-party misuse of their brands in the virtual field.  It is expected we will only see the growth of NFT popularity, which raises the question of their place in the intellectual property realm and how rights should be defined – whether art or not.

Key Takeaways on the Use of MetaBirkins as NFTs

As the digital artist and creator of MetaBirkins NFTs is sued for claims of trademark infringement for use of BIRKIN® within the name of virtual product, there are questions to be answered:

• Is an NFT mimicking a real-world product simply art and protected against intellectual property infringement?

• Must brand owners expand the use of their marks into the virtual field to properly protect their marks from third-party use?

• Should use of a mark for virtual goods only be considered infringement of similar marks for tangible goods outside of the virtual field?

For more information about trademark litigation, see our Trademark Services and Industry Focused Legal Solutions pages.