Artist Mason Rothschild released 100 so-called “MetaBirkins” at Art Basel in Miami. The MetaBirkins are NFTs pointing Rothschild’s digital renditions of furry purses recognizable as the Hermes Birkins bag. According to Rothschild, the NFTs were created as a statement to draw attention to the use of leather in fashion and encourage fur free fashion. At the same time, Rothschild offered the NFTs for sale through Basicspace for Ethereum crypto currency. It is estimated that the value of the sale of the Metabirkins following the Art Basel event amounted to approximately $400,000. This commercial purpose and the striking similarity of the design, prompted Hermes to sue Rothschild for trademark and trade dress infringement in the Southern District of New York. My former colleagues Deborah Wilcox and Oren Warshovsky from BakerHostetler represent Hermes. The views expressed in my article are not those of my former firm or these individuals.
While Rothschild has not answered the allegations in the complaint, he did seek to dismiss Hermes’s claims. Rothschild argued that Rogers v. Grimaldi permits artistic use of trademark barring expressly misleading content. The Rogers case dealt with the use of Ginger Rogers’s name within the title of a movie, “Ginger and Fred.” Rothschild also pointed to a Louis Vuitton case where the court denied Vuitton’s infringement claim for use of an imitation Vuitton bag in the Hangover movie. As an alternate ground for dismissal, Rothschild cited the Dastar case as holding that trademark infringement for physical goods cannot be extended to a non-physical use. At least for now, the court has refused to dismiss Hermes’s claims and rejected the argument that either Rogers or Dastar unambiguously protects Rothschild’s conduct.
While the court has not issued its formal opinion, these issues and additional questions not reached at this stage in the litigation demonstrate the import of this case on the scope of trademark rights in virtual environments. Specifically, whether registrations for physical goods, such as hand bags, cover their virtual counterparts or whether virtual goods will be considered similar to physical goods within the likelihood of confusion factors were not at issue in the motion, but will certainly be considered as the case moves forward.
While we wait for this decision, brands that foresee use of their trademarks in NFT applications or in connection with other virtual goods should consider filing an intent to use trademark application to provide a basis for extending their rights to these goods. An intent to use application establishes a filing date for a registration and allows the applicant up to three years to begin using the trademark on the specified goods. Companies, like Nike, have already begun taking advantage of ITU applications to protect their brands to cover virtual goods and services. The following is one example of a virtual good description covering software goods (class 9) and entertainment services (class 41).
Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds
Entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments
Notably, Nike and others have begun creating NFTs and other virtual goods that will support these applications and further strengthen their position when dealing with virtual infringements.
To summarize, owners of creative properties, retail goods and services and popular brands would be wise to begin considering their use strategy with respect to virtual goods and services, and preemptively file intent to use trademark applications to establish priority in the trademark office. If you have questions about trademarks and virtual uses of your brand, the Hermes case is a good case to follow or contact your favorite IP attorney.
