In one of the first intellectual property cases brought to federal court that deals with non-fungible tokens (NFTs), fashion brand Hermes has won a copyright lawsuit against an artist who created NFT versions of its Birkin bags.
The NFTs, which were fully digital, were positioned by artist Mason Rothschild — whose legal name is Sonny Estival — as a “tribute” to Hermes’ designer Birkin bags. After the fashion brand sent him a cease and desist letter last year, Rothschild said that argued that the NFTs would be shielded from trademark claims because, “the First Amendment, gives me every right to create art based on my interpretations of the world around me,” The Fashion Law reports.
A jury disagreed and awarded Hermes $133,000 in damages for trademark infringement, dilution, and cybersquatting over 100 NFTs that he created that were associated with the handbags. Hermes Birkins typically sell for tens of thousands of dollars and the company has sold over $1 billion worth of Birkins in the United States to date.
As Reuters reports, the case was being closely watched because it had the potential to clarify how trademark law would apply to NFTs. Rothchild’s lawyer called the result a “terrible day for artists and the First Amendment.”
Hermes positioned Rothschild as a “digital speculator” as part of a “get rich quick” scheme that started in December of 2021 and had by the beginning of the following month ballooned in value to over $1 million.
Rothchild’s defense was largely based on pointing to the work of Andy Warhol, specifically his soup cans art which was not authorized by Campbell’s.
The reference to Warhol is particularly notable given a currently pending case involving the artist and fair use, which the Supreme Court will render judgment on later this year. While there is clearly nuanced difference between the two cases, there are tones of similarity. Warhol’s use of Lynn Goldsmith’s photo of Prince has been the main point of contention, and most copyright experts have agreed that Warhol’s work was not substantially transformative enough to qualify as Fair Use. Lower courts so far have agreed, and it’s not clear if the Supreme Court will overrule them.
One major difference between these two cases is that Hermes indicated that as Rothchild was creating his NFTs, it was also considering a digital art series — an endeavor that Rothchild’s work hindered. Still, court results to this point are consistent. That is, at least so far.
Image credits: Header image, Metabirkins by Mason Rothschild