In International and Hermès of Paris v. Rothschild, the famous Birkin bag served as a device to trigger the plot in a lawsuit about trademarks, first amendment rights, and talking too much.
The defendant is a self-styled marketing strategist and entrepreneur who comes from the fashion industry. Before the events in this lawsuit, he created a digital image called a Baby Birkin, which depicted a fetus gestating inside a transparent Birkin bag.
More recently, the defendant created a collection of non-fungible tokens (NFTs) for digital images called MetaBirkins. Each depicts an image of a blurry, fake-fur-covered Birkin handbag. These NFTs sell for about as much as the real world Birkin handbags sell.
To the benefit of the plaintiffs, consumers exhibited actual confusion on the Instagram page for Rothschild’s MetaBirkins. Evidently, they believed Hermès was affiliated with defendant’s collection. The press also demonstrated actual confusion, and several widely circulated publications confidently stated that the MetaBirkins were sold in partnership with Hermès…
Rothschild brought his motion to dismiss the complaint for trademark infringement and dilution of a famous mark on a very interesting ground: he claimed that, because the digital images tied to the NFTs are works of art, then the court must apply the Second Circuit’s test in Rogers v. Grimaldi. In that case, the estate of Ginger Rodgers sued over the movie title “Fred and Ginger,” but the court found that the film producers’ First Amendment in works of artistic expression took precedence over the estate’s right of publicity in Rodgers’ name.
Even though the Rogers case applied to right of publicity and a movie title, it’s also been used in connection with trademark matters and other kinds of titles. The good news for defendant Rothschild in this case was that the district court agreed to apply the Rogers test. The bad news was that under that test, the plaintiff made sufficient allegations to defeat defendant’s motion to dismiss.
The court said using the title of the artwork for social media and online accounts for the MetaBirkin works was like the marketing and advertising that the court approved in Rogers. However, plaintiff alleged that defendant’s use of the trademark was not artistically relevant: that is, the Birkin mark allegedly was used to identify the plaintiff’s famous product, rather than to make an artistic statement.
Plaintiff also had alleged that Rothschild’s use of the BIRKINS mark was explicitly misleading, another exception set forth in the Rogers case. That is, defendant allegedly intended to associate his MetaBirkins with the popularity and goodwill of Hermès BIRKINS mark, not just to serve as an artistic association. To determine if something was misleading would require the court to consider all seven factors of the Polaroid case, and plaintiff sufficiently addressed those factors in the complaint. Because more facts needed to be developed, the court denied the motion to dismiss.
One of the things that really hurt the defendant in this motion was that in an interview, Rothschild bragged that he “wanted to see as an experiment if he could create that same kind of illusion that the Birkin bag has in real life as a digital commodity”; that he recognized that the name of his work was referencing a luxury brand; and that he was trying to get people interested in his work. So Hermès could argue that Rothschild himself, “made statements that are plausibly interpreted as explicitly misstatements,” and this engendered a likelihood of confusion among consumers. Once again, it’s the inadvertent admissions that seem to come and bite the litigants.
The bottom line: Litigation is tough on those of us who like to talk a lot. Self-promotion can be fatal.
