Description
In Hermès International, et al. v. Mason Rothschild case (a.k.a. “MetaBirkin” case), one of the most popular and appealing trademark disputes in NFT world, U.S. District Court for the Southern District of New York issued a decision in which Hermès, the owner of the Birkin trademark for luxury handbags, filed a claim for trademark infringement and dilution of the Birkin mark, that the “MetaBirkin” name might not be artistically relevant to the work of art (contrary to Rothschild’s allegation) and, even if it were, Rothschild’s use of it might still be explicitly misleading and point to allegations of Rothschild’s intent to exploit the popularity and goodwill of the Birkin mark and might be used as evidence of actual confusion against Rothschild’s opposition where he argued that Hermès’ trademark claims to be dismissed because his digital images were protected artistic expressions and not actual handbags in reference to Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) case, in which the use of a trademark in a work of art was not upheld as an infringement as long as (i) the name is artistically relevant to the work and (ii) the use of the trademark does not explicitly mislead as to the source or content of the work. This decision, as most of the other relevant decisions granted in different jurisdictions of the world, deprived 3rd parties from exploiting notorious trademarks as NFTs in the virtual world irrespective of whether those trademarks have been registered and/or used in compliance with the requirements of Metaverse or not.
