It was just a matter of time before the NFT law space started to heat up. The world of NFTs, which stand for non-fungible tokens, has been described as the Wild Wild West, where many static or dynamic digital images tend to fetch massive amounts of money (commonly through the expenditure of Ethereum). Some projects are based on the creation of original imagery from artists who, if done property, assign their rights in the underlying content to the project operators. However, others appear to be overtly attempting to take advantage of the goodwill of others as a quick cash grab.
Take for instance the project known as “METABIRKINS.” Mason Rothschild, an individual who engaged in the distribution and sale of the METABIRKINS NFT project, has been sued by Hermès International and Hermès or Paris, Inc. in the United States District Court for the Southern District of New York. While his listings on OpenSea, a website commonly used by individuals to buy and sell NFTs, has been removed after OpenSea received a demand letter from the plaintiffs, Rothschild still hosts information about his collection of 100 unique NFTs on MetaBirkins.com.
Rothschild claims that the METABIRKINS NFT collection is inspired by the acceleration of fashion’s “fur free” initiatives and embrace of alternative textiles. He includes a disclaimer on his website that indicates the project is not affiliated, associated, authorized, endorsed by, or in any way officially connected with Hermès or any of its subsidiaries or affiliates. Hermès obviously does not believe the disclaimer is sufficient and has decided to instead bring a seven-count complaint against Rothschild for claims such as trademark infringement, false designation of origin, and trademark dilution.
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The lawsuit truly boils down to a claim that Rothschild has very simply ripped off Hermès’ famous BIRKIN trademark by merely adding the generic prefix “meta” with either the hope that the addition would sufficiently distinguish the project from the iconic brand or the lack of care as to the consequences.
“Defendant’s adoption of the METABIRKINS trademark has brought him great
financial success in a matter of weeks,” states the complaint. “There can be no doubt that this success arises from his confusing and dilutive use of Hermès’ famous trademarks. As one commentator, among many, noted in response to recent media coverage: “If this … wasn’t called ‘[B]irkin’ would it be getting any
attention?'”
Probably not. Interestingly, Rothschild is getting a taste of his own medicine. He has purportedly complained of others counterfeiting his METABIRKINS on NFT marketplaces. Essentially he is upset that third parties are doing to him what he has done to the Hermès brand.
This case should be in the bag for Hermès, but it also should cause brands to not sit around and wait for this type of infringement to occur. They should be figuring out their own strategies for the metaverse and also adding to their existing trademark filings. Brands such as Walmart, Puma, and New Balance have recently been covered for taking a proactive approach in this regard.
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Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at [email protected] and follow him on Twitter at @DarrenHeitner.