Hermès' Trademark Tussle: The Birkin And MetaBirkin Dispute

• Jurisdiction: United States,Federal
• Law Firm: Pillsbury Winthrop Shaw Pittman
• Subject Matter: Intellectual Property, Trademark
• Author: Ms Carolyn S. Toto and Aya Hatori
• Published date: 18 February 2023

Hermès is a luxury fashion brand famously known for its iconic Birkin handbag. Since 1986, Hermès has sold over $1 billion worth of these handbags in the United States, including over $100 million worth in the past 10 years. Even the entry-level Birkin bags sell for tens of thousands of dollars. Exotic Birkins such as the Himalaya Birkin and the special edition Faubourg Birkins fetch well over a $100,000, and as such, Birkin bags have been considered the epitome of luxury handbags. Currently, the most popular size of the Hermès Birkin is its smallest-a 25 cm Birkin lovingly nicknamed "the baby Birkin."

In May 2021, Defendant Mason Rothschild (whose real name is Sonny Estival) created a non-fungible token (NFT) depicting an image of a fetus gestating in a transparent Birkin bag and called it "Baby Birkin." The Baby Birkin NFT sold for $23,500 and recently resold for $47,000. Backed by the success of the Baby Birkin NFT, Rothschild later created a collection of digital images entitled "MetaBirkin," which he sold on his website and on exchange sites such as openseas.com.

Hermès sued Rothschild alleging 1) trademark infringement of "BIRKIN" and its design and iconography of the handbag, 2) appropriation of the Birkin mark that diluted and damaged the brand, 3) cybersquatting via metabirkin.com, and 4) unfair competition in the NFT space.

To determine whether Rothschild infringed, misappropriated and cybersquatted turns on the outcome of the Rogers test outlined in the seminal case Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir. 1989). The Rogers test is applied when the art could constitute a form of artistic expression in determining whether the artistic expression is protected under the First Amendment. Determining the outcome of the second prong of "explicitly mislead[ing]" the public can be determined by applying the eight Polaroid factors in Polaroid Corp v. Polaroid Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), including (1) the strength of Hermès' mark; (2) the similarity between Hermès' "BIRKIN" mark and the "MetaBirkin" mark; (3) whether the public exhibited actual confusion about Hermes' affiliation with Rothschild's MetaBirkin collection; (4) the likelihood that Hermès will "bridge the gap" by moving into the NFT space; (5) the competitive proximity of the products in the marketplace; (6) whether Rothschild exhibited bad faith in using the Hermès' mark; (7) the respective quality of the MetaBirkin and Birkin marks; and (8) the sophistication of relevant...