The luxury maison is preparing to take another step in the lawsuit that has seen it pitted for almost two years against an American artist specializing in the creation of digital works.
Hermès, NFTs and intellectual controversy
This is a case that could very well serve as a textbook in the world of Web3. The trial between the Hermès label and digital artist Mason Rothschild will begin on January 30. 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 judges around the notion of Intellectual property.
As a reminder, in early 2021, Mason Rothschild co-signed with painter Eric Ramirez “Birkin Girl”, an NFT inspired by the Hermès bag of the same name. A few months later, after seeing his digital work fetch an estimated $23,500 on the Basic Space platform, Rothschild marketed “MetaBirkins,” a series of 100 NFTs featuring the famed accessory once again.
Enough to make Hermès nervous, which then denounced an attack on its brand image and intellectual property where Mason Rothschild loudly and clearly invoked his right to “freedom of word”. Last year, Hermès filed a complaint against the latter in a New York court, requesting the arrest of the project, the recovery of the domain name, but also the payment of damages linked in particular to the sale of these NFTs, the total amount that would have been exceeded $1.1 million.
While at the beginning of the affair Hermès had mentioned the fact that it did not have “still” launched their own NFTs, the label appears 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 made 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
However, the outcome of this process could have consequences on a larger scale regarding the issue of intellectual property in virtual universes.
“Metaverses involve the emergence of many virtual creations and works that need to be protected and framed”explained Merav Griguer, Bird&Bird lawyer and specialist in International Privacy & Data Protection, in an interview for the Special Edition “Luxury, NFT and Metaverse: value at the heart of Web3“. “The platforms will in particular have to adapt their general conditions by specifying, among other things, the ownership of the rights to the works. Similarly, theTrademark owners will need to remain vigilant and adapt their trademark registrations and wording to the metaverses, in particular by extending metaverse protection to new classes of goods and services. They will also have to set up monitoring actions to combat counterfeiting: any use of a brand or its products in the metaverse requires the prior authorization of its owner. In any case, it will be necessary to regulate in the contracts the intellectual property rights, the methods of exploitation, the transfer of rights, the extent of the licences…”. Verdict in a few months.