{"id":4362,"date":"2023-07-25T10:51:18","date_gmt":"2023-07-25T00:51:18","guid":{"rendered":"https:\/\/sanickilawyers.com.au\/?p=4362"},"modified":"2023-07-25T10:51:18","modified_gmt":"2023-07-25T00:51:18","slug":"real-world-trade-marks-in-the-digital-space","status":"publish","type":"post","link":"https:\/\/sanickilawyers.com.au\/real-world-trade-marks-in-the-digital-space\/","title":{"rendered":"Real-World Trade Marks in the Digital Space"},"content":{"rendered":"\n

NFTs are an especially new technology, and currently go quite underregulated; it was previously unclear as to how much weight a real-world trade mark carried in the digital realm. The Herm\u00e8s Int’l v. Rothschild<\/em> case offers some certainty in this developing area of law and a greater degree of clarity in the Web3 space. <\/p>\n\n\n\n

The MetaBirkin<\/h2>\n\n\n\n

Within the hallowed halls of fashion accessories, the Herm\u00e9s Birkin retains its own special niche. Initially designed in 1984 for young wealthy mothers, the bag has since been coveted as a powerful symbol of exclusivity and social status. Digital artist Mason Rothschild (real name Sonny Estival) released his own line of Birkins, or, rather, MetaBirkins<\/em>, in December 2021<\/a>. <\/p>\n\n\n\n

Herm\u00e9s, however, were not impressed. As Rothschild revealed via an open letter on the @birkinbags Instagram page<\/a>, the French fashion label had issued him with a cease-and-desist letter. Alleging that the MetaBirkins were \u201ca playful abstraction of an existing fashion-culture landmark\u2026 akin to selling\u2026 physical art prints,\u201d<\/a> Rothschild apologised but nevertheless castigated Herm\u00e9s\u2019 apparent failure to follow the \u201cmoving tide of innovation and evolution.\u201d<\/a> He refused to pull the MetaBirkins from the digital market. <\/p>\n\n\n\n

This collection of 100 digital handbags released by Rothschild are an example of what is a known as an NFT. These non-fungible digital tokens use the blockchain technology to ensure that they are unique and unchangeable, existing solely in the virtual realm. Often, they are purchased using cryptocurrencies, which themselves derive their value from their exchange rate with real-world currencies.<\/p>\n\n\n\n

Lawsuit<\/h2>\n\n\n\n

In January 2022, Herm\u00e9s filed suit against Rothschild, alleging that his MetaBirkin series “>constituted trade mark infringement<\/a>. During the case, the Court applied the Rogers Test, named after American actress Ginger Rogers. This test originates in the Rogers v Grimaldi<\/em> case, wherein Rogers alleged that the producers of the Fellini film Ginger and Fred<\/em> violated the Lanham Act (the USA\u2019s primary source of trade mark statute) by suggesting she was involved in the film. The Rogers Test considers whether something is a \u201cprotected artistic expression.\u201d If so, it is beyond the scope of the statute; only commercial products are subject to the Lanham Act. <\/p>\n\n\n\n

Whilst he was incensed that his MetaBirkins were not found to be expressive works, the court found that he was, in effect, \u201csimply a swindler\u201d who \u201cintentionally misled consumers into believing Herm\u00e9s was backing\u2026 [his] products\u201d<\/a>. Ironically, the court were faced with many of the same questions that were being addressed in 1988, just months before Rogers v Grimaldi<\/em> was even decided: \u201cWhat is art, and can it be legislated?\u201d<\/a>. <\/p>\n\n\n\n

Ultimately, the court sided with Herm\u00e9s: They were granted their request for a permanent injunction, and Rothschild was denied both a judgment of law in his favour and a retrial.<\/a> Rothschild was barred from using Birkin marks, in order to prevent the general public from being mislead as to the source of the MetaBirkins. Additionally, his www.metabirkins.com<\/a> domain was found to have constituted cyber-squatting, which is the unauthorised use of domain names that are indistinguishable from pre-existing trade marks. Furthermore, Rothschild was ordered to disgorge any profits he derived from the MetaBirkins NFTs<\/a> since the beginning of trial to the present day, on top of $133,000 in damages owed to Herm\u00e9s.<\/p>\n\n\n\n

Free Speech and Protecting IP Rights<\/h2>\n\n\n\n

It appears there is something of a legal tension between the protection of trade marks and the safeguarding of (American First Amendment) free speech rights. This challenge is complicated further by Rothschild\u2019s efforts to blur the line between artistic expression and commercial product within a sprawling digital marketplace. <\/p>\n\n\n\n

In this debate around the distinction between protected artwork and digital appropriation, many drew comparisons between Rothschild\u2019s MetaBirkins and Warhol\u2019s Campell\u2019s Soup cans. Art historian Blake Gopnik contends that both artists practise within the \u201cbusiness art\u201d tradition, which seeks to erode the border between artmaking and pure commerce. Nevertheless, Judge Jed Rakoff did not share his view that the \u201cMetaBirkins positively obscure their connection to the [Herm\u00e9s] brand\u201d<\/a>. Rather, the MetaBirkins did not “>\u201cqualify as First Amedment-protected speech\u2026 exempt from anti-dilution laws\u201d<\/a>. Importantly, it is worth noting that Gopnik was blocked from testifying at trial, on the basis that his particular area of expertise was not \u201cbased on reliable data or a clear methodology<\/a>“.<\/p>\n\n\n\n

Conclusion<\/h2>\n\n\n\n

Perhaps the greatest takeaway from this MetaBirkin case is that physical or real-world trade mark rights can extend into the digital realm. Despite the challenges inherent to the Wild West of the World Wide Web, Herm\u00e8s Int’l v. Rothschild<\/em> provides clear assurance that intellectual property can still be safeguarded.<\/p>\n","protected":false},"excerpt":{"rendered":"

NFTs are an especially new technology, and currently go quite underregulated; it was previously unclear as to how much weight a real-world trade mark carried in the digital realm. The Herm\u00e8s Int’l v. Rothschild case offers some certainty in this developing area of law and a greater degree of clarity in the Web3 space. The MetaBirkin … Continued<\/a><\/p>\n","protected":false},"author":9,"featured_media":4021,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[65,116,106],"tags":[66,226,227,93,217],"class_list":{"0":"post-4362","1":"post","2":"type-post","3":"status-publish","4":"format-standard","5":"has-post-thumbnail","7":"category-design-technology","8":"category-fashion-design","9":"category-trademarks-copyright","10":"tag-intellectual-property","11":"tag-intellectual-property-law","12":"tag-metaburkin","13":"tag-trade-mark","14":"tag-trade-mark-infringement","15":"entry"},"acf":[],"yoast_head":"\nReal-World Trade Marks in the Digital Space - Sanicki Lawyers Melbourne<\/title>\n<meta name=\"description\" content=\"NFTs are an especially new technology, and currently go quite underregulated; it was previously unclear as to how much weight a real-world trade mark carried in the digital realm.\" \/>\n<meta name=\"robots\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<meta property=\"og:locale\" content=\"en_US\" \/>\n<meta property=\"og:type\" content=\"article\" \/>\n<meta property=\"og:title\" content=\"Real-World Trade Marks in the Digital Space - Sanicki Lawyers Melbourne\" \/>\n<meta property=\"og:description\" content=\"NFTs are an especially new technology, and currently go quite underregulated; 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