Cybersquatting: Hermes won against Mason Rothschild
For some years now, the fashion house Hermes has had to take action against the American artist known as Mason Rothschild who had used the well-known silhouettes of the iconic Birkin bag to create NFTs (Non fungible tokens) and sell them on platforms dedicated to the trading of digital assets . The products were known as METABIRKIN. They did not reproduce real bags on the market and were mostly personal interpretations of the product (often covered in colored fur, which does not happen in the original Hermes).
After various judgments and even different litigation venues (from France to the United States, with a consequent application of laws and interpretations on the matter) the New York jury established the violation of the intellectual property right by the artist.
The judge ordered economic compensation to Hermes to restore the company from misusage of the trademark (use or registration) in bad faith by third parties. Thus the concept of cybersquatting was defined in a sentence, a digital appropriation of an asset, in this case fully confusing with the original product.
The views of the two sides are based on the one hand on the first amendment and the freedom of expression by an artist.
On the other hand, on the necessary protection of intellectual property, distinctive signs and the brand by a company.
The artist tried to compare his work to that of Andy Warhol, for example, with Campbell soup, the iconic reproduction of a mass product but elevated by the art itself.
In this case, however, the medium used also played in the plaintiff's favor since Hermes did not hide the possibility of entering, like many other companies, the metaverse and its applications, extending the protection of its brands to digital worlds that years ago we thought out of the reach of producers of physical and non-art products.
The series of proceedings is now unappealable, constituting an absolutely innovative and interesting precedent for anyone, attracted by the potential of digital artistic exchange platforms, trying to create products through distinctive signs belonging to third parties and therefore already protected, especially if in bad faith and looking for an easy shortcut to fame and notoriety.
Here some of the official documents of the case.