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The dispute over the infringement of intellectual property rights related to NFTs depicting MetaBirkins seems to have come to an end with the decision of the New York court.
Following the court order in the famous case brought by Juventus soccer club on IP infringements through NFTs, another important piece is now added to the picture that makes up the protection of intellectual property rights in relation to digital assets consisting of NFTs depicting MetaBirkins. The decision in question puts an end – at least for now – to the dispute that arose last year in the United States between a famous French fashion house and an artist who had offered for sale on various marketplaces a collection of 100 “MetaBirkins” NFTs depicting different versions of the bag of the same name considered one of the brand’s iconic products.
Specifically, the company claimed infringement of its trademark rights for using the famous word mark “Birkin” and the related trade dress on the product form without its consent, simply adding the generic prefix ʻmeta’, referring to the virtual world in which digital goods such as NFTs are traded. This was compounded by the fact that the artist had also registered the MetaBirkins.com domain and some social media profiles under the same name, which created further risk of confusion with the famous fashion house.
The artist had defended himself by claiming that his creations were protected by the freedom of artistic expression protected by the First Amendment of the U.S. Constitution, as it was an operation aimed at denouncing animal cruelty and the use of fur and leather in the fashion industry. Indeed, the case captured attention and was closely monitored by jurists, artists, and companies around the world because it required the U.S. court to determine the boundary between the protection of the exclusive rights attributed to a trademark owner on the one hand and freedom of artistic expression on the other, with specific reference to the digital asset sector.
As many expected, the jury and the U.S. District Court for the Southern District of New York extended the principles of intellectual property law commonly applied in the real world to the digital world of NFTs, concluding that the purely commercial purpose related to the sale of the NFTs in question (from which the artist apparently earned about $1 million) prevailed over artistic freedom and could therefore not exclude the infringement of brand rights. In this regard, in fact, the analogy proposed by the defendant between the MetaBirkin NFTs and the works of Andy Warhol in which the iconic Campbell soup cans were reworked was not deemed relevant.
Equally irrelevant was the fact that at the time the dispute was instituted, the plaintiff company had not yet filed for the trademarks brought into action in Class 9 for digital goods. In this respect, the court ruled, on the one hand, that the applications filed by the fashion company during the pendency of the litigation demonstrated its interest in operating in the NFT sector and, on the other hand, that in any case the signs being acted upon enjoyed the extra-commodity protection accorded to trademarks that enjoy renown, such as certainly those of the plaintiff on one of the world’s most famous handbags.
Therefore, in a decision dated Feb. 14, 2023, the U.S. court ruled in full in favor of the brand, ordering the artist to pay damages of $110,000 for trademark infringement and $23,000 for cybersquatting. However, the artist has already announced that the war is not over, so we expect that there will be no shortage of other twists and turns!
On a similar topic, the article, “Italian Court rules on trademark breach through NFTs relating to a football player” may be of interest.
