Hermès Birkin Case and Trademark in the Metaverse
Hermès is famous for their Birkin handbag, which is expensive and serves as a symbol of wealth. They registered the trademark BIRKIN® with the US Trademark Office, but it only covered tangible handbags and not digital representations. In 2021, an artist named Mason Rothschild created MetaBirkin NFTs, which are digital representations of a unique, fuzzy Birkin handbag. He sold over a million dollars worth of them, but Hermès sued him for trademark infringement, dilution, and cybersquatting. Hermès argued that the MetaBirkin name trades on the goodwill of the Birkin brand and that consumers may be confused into thinking there is an endorsement or connection with Hermès. Rothschild argued that his artwork commented on the original and did not trade on the goodwill of the Birkin bag, and that the disclaimer on his website removed any possibility of confusion. The jury awarded Hermès $133,000 in damages, and Hermès filed a motion seeking a Permanent Injunction to block Rothschild and any affiliates from promoting and owning the MetaBirkin NFTs. The case raises questions about trademark rights in the digital landscape and whether brand owners should proactively file trademark applications to cover goods and services in the digital arena. Some fashion brands have already started to register their trademarks in connection with their activities in the metaverse. Here are some examples:
Gucci - Gucci has registered trademarks for its brand in relation to virtual reality headsets and software for virtual reality simulations.
Nike - Nike has registered trademarks for its brand in relation to computer game software and virtual reality games.
Louis Vuitton - Louis Vuitton has registered trademarks for its brand in relation to virtual reality headsets and virtual reality software.
Burberry - Burberry has registered trademarks for its brand in relation to computer game software and virtual reality games.
Chanel - Chanel has registered trademarks for its brand in relation to virtual reality headsets, virtual reality software, and computer game software.
Trademark Protection in the Web3 Sector
Legal protection for brands operating in the Web3 sector can be obtained through trademark applications in the Metaverse. Such applications cover various identifiers, such as a word, logo, phrase, or design, that distinguish the origin of virtual goods and services and differentiate them from those offered by other entities.
By registering a trademark for the Metaverse, a brand can establish virtual retail stores that offer virtual goods and services for use in virtual worlds. It is worth noting that even if a business has already trademarked its goods and services, it will need to file separate Metaverse applications, as existing trademarks typically only cover physical goods and services.
Benefits of a Metaverse Presence
Metaverse trademarks are classified based on the types of virtual goods and services they cover, such as downloadable virtual goods, online virtual clothing stores, virtual financial services, and communication services, among others. While standardization for goods and services in the Metaverse is expected to evolve over time, these classifications are currently adequate for companies to begin reaping the benefits of a presence in the Metaverse.
These benefits include expanding a company's services from the physical world to the Metaverse, appealing to younger generations, and accessing virtual economies where cryptocurrencies and blockchain technology are utilized.