A Win for Hermès in the Metaverse

We wrote last year about the increase in intellectual property filings in the metaverse and a recent US court decision has highlighted the value in securing trade mark protection in relation to non-fungible tokens (NFTs) and virtual goods.

After a year-long battle, Hermès has succeeded in its US lawsuit brought against Mason Rothschild in relation to the use of ‘MetaBirkin’ and associated infringement and dilution of its Birkin trade marks, as well as cybersquatting. Rothschild had created a collection of NFTs called MetaBirkins, with each depicting an image of a cartoonish fur-covered Birkin handbag. Other versions of the digital bag included polka dots and artworks, such as the Mona Lisa, with each priced at $450. Whilst Rothschild saw it as a harmless tribute to Hermès’ iconic offering, Hermès did not and neither did the jury, who awarded $133,000 in damages comprising $110,000 for intellectual property infringement and £23,000 for cyber squatting.

Whilst the case was a US federal jury trial and did not establish any mandatory legal precedent, the verdict gives an insight into how courts might treat NFTs that incorporate the intellectual property rights of others and suggests that IP rights should apply in the digital world, just as they do in the real world.

If you would like to discuss protection of your IP in the metaverse and the most appropriate classes of goods and services in which to apply, please get in touch with us at [email protected].