impending trial over MetaBirkins NFTs.

The luxury house is preparing to take a further step in the case that has pitted it for nearly two years against an American artist specializing in the creation of digital works.

Hermès, NFTs and intellectual controversy

This is a case that could well serve as a textbook case in the world of Web3. On January 30, the trial between the Hermès label and the digital artist Mason Rothschild will begin. In the absence of a summary judgment in the face of the complexity of the situation, the two parties involved will therefore have to argue before the American courts around the notion of intellectual property.

As a reminder, in early 2021, Mason Rothschild co-signed “Baby Birkin” with painter Eric Ramirez, an NFT inspired by the Hermès bag of the same name. A few months later, after seeing his digital work fetch some 23,500 dollars on the Basic Space platform, Rothschild marketed “MetaBirkins”, a series of 100 NFTs once again featuring the famous accessory.

Enough to ruffle the Hermès house, which then denounced an attack on its brand image and intellectual property where Mason Rothschild invoked loud and clear his right to “freedom of speech”. Last year, Hermès filed a complaint against the latter with a court in New York, asking for the project to be stopped, the recovery of the domain name, but also the payment of damages related in particular to the sale of these NFTs, the total amount of which would have exceeded $1.1 million.

While at the beginning of the Hermès affair had mentioned the fact of not having “Again” launched its own NFTs, the label seems to have come a long way since then. If Axel Dumas, manager of the house, had indicated that he saw in them “communication tools” without making it a priority, Hermès would have carried out a trademark application last summer with the United States Patent and Trademark Office for the development of metaverse and NFT applications.

A new milestone in Web3 legislation

Still, the outcome of this trial could have consequences on a larger scale regarding the question of intellectual property in virtual universes.

“Metaverses involve the emergence of many virtual creations and works that must be protected and framed”explained Merav Griguer, a lawyer at Bird&Bird and specialized in International Privacy & Data Protection, in an interview for the Special Edition “Luxury, NFT & Metaverse: value at the heart of Web3”. “The platforms will in particular have to adjust their general conditions by detailing, among other things, the ownership of the rights to the works. Likewise, theTrademark holders will have to remain vigilant and adapt the registrations and wording of their mark(s) to metaverses, in particular by extending the protection of the latter in new classes of products and services. They will also have to set up monitoring actions in order to fight against counterfeiting: any use of a brand or its products in the metaverses requires the prior authorization of its owner. In all cases, it will be necessary to regulate in the contracts the intellectual property rights, the modes of exploitation, the transfer of rights, the scope of the licenses…”. Verdict in a few months.