On 8 February 2023, the New York Court found the American artist Mason Rothschild guilty of counterfeit and dilution of the registered trademark BIRKIN for marketing under the name “MetaBirkins” NFTs representing faux-fur-covered handbags whose shape was inspired by the iconic Birkin bag from Hermès.
The Court considered that the promotion and marketing of these products misled the public into thinking that there was a possible link with Hermès, thus rejecting the principle of the artist’s freedom of expression invoked by the defendant.
Each NFT (i.e. a digital file with a digital certificate of authenticity attached), which by nature is different from the handbag, was sold at almost the same price as the genuine handbag.
Assuming that such a case could be brought before the French courts, what might be the basis for a legal action?
The claim of counterfeit of the reputed trademark based on Article L.713-3 of the Intellectual Property Code should be preferred when it can be established the reputation of the trademark, its use in the course of business, even for non-similar products, and that this use, without just cause, takes unfair advantage of the distinctive character or reputation of the trademark, or is detrimental to its owner.
The use of the name MetaBirkin does constitute a use in the course of trade, since it is intended to sell NFTs.
Given the reputation of the trademark Birkin and the similarity of the name MetaBirkin, the target public, some of whom are likely to be customers of Hermès, would be likely to establish a link between the NFTs and the authentic products insofar as the image of the handbags represented by the NFTs is inspired by the image of the authentic handbag, thus prompting them to acquire the NFTs in question.
Another option, which could be possibly cumulated with the previous one, would be to act on the basis of parasitism insofar as the combined use of the appearance of the Birkin handbag, in various variations, for the creation of these NFTs, and of the name MetaBirkin for the promotion and sale of these NFTs, would demonstrate Mason Rothschild’s desire to follow in the footsteps of Hermès in order to profit without spending money of this notoriety to sell its NFTs at prices equivalent to those of Birkin handbags.
Copying the image of a famous product was recently condemned by the Paris Court of Appeal in its decision dated 18 November 2022 concerning the famous Rubik’s Cube, the Court having considered that the reproduction, in particular, of “the external appearance of the Rubik’s Cube” was an act of parasitism (case won by Lavoix).
LAVOIX remains at your disposal to define a strategy for the protection of your trademarks and designs against acts of counterfeiting on the Web 3 and to set up surveillance, particularly on NFT sales platforms.