Hermès International v Mason Rothschild. What does this landmark NFT case mean for artists?
By Nicola Dawson
In 2021, claims were brought against independent artist Mason Rothschild, known as MR, by Hermès, after the former created and sold a series of digital image NFTs which incorporated the iconic design of the Hermès Birkin bag. NFTs, digital media and digital property in general are all becoming much more common, and they pose new challenges for both artists and buyers. Whilst still a relatively new area of art, and one which is all but entirely ungoverned by law, cases involving potential copyright infringements in the metaverse are no doubt going to become more and more common until some guidelines for their production and distribution are put into place. This article explores in greater detail the Hermès International v Mason Rothschild case, identifying arguments utilised by both sides, as well as exploring the resulting implications for artists.
Firstly, what are NFTs and how are they functioning in the art world? NFTs, or non-fungible tokens, are assets which have been tokenized via a blockchain. Essentially, any asset, tangible or non-tangible, can be made into a NFT through a process called minting, in which a token is assigned a unique identification code which is linked to a secure blockchain which stores any information about the NFT, including its creation and any transaction involving it, in a secure, immutable form. Anything can be turned into an NFT and tokenized, at which point it represents a totally unique asset which can then be traded or exchanged for money, cryptocurrencies, or other NFTs. NFTs are useful as they provide a highly secure and easily traceable way in which to buy and sell assets. Ultimately, blockchain technology is well suited to trading art specifically as it provides a way to ensure that a work’s provenance is accurate and reliable, countering a highly prevalent issue in the art market.
NFTs have received varied feedback. Some have criticised the fact that ownership terms over the NFT are defined by the creator, therefore potentially undermining the capability of the owner to do as they please with their purchase. Other concerns centre around security, bringing into question concerns regarding theft and storage. NFTs of digital art have also faced backlash over their prices, which can often be extraordinarily high, although this rather cynical criticism fails to take into account the inherently subjective value of art, even in the physical world, and seems to reflect a more general criticism of digital art as a medium.
However, their reception has not been entirely negative. For example, Christie’s have launched their new endeavour ‘Christie’s 3.0’, which is a platform dedicated to the auction of digital art in NFT form. One of the most notable NFT success stories came for artist Beeple, who’s digital art collage entitled EVERYDAYS: THE FIRST 5000 DAYS sold for an eye-watering $69,346,250 in a single lot sale by Christies. The piece, EVERYDAYS: THE FIRST 5000 DAYS, is a collage which combines 5000 different pieces of digital art created by designer Mike Winkelmann (also known as the artist Beeple) over thirteen and a half years. The surreal, eccentric, cartoonish aesthetic of his designs is not unique and can be widely identified in art from across the twentieth century, and the criticism of consumerism and politics which he includes also have long histories in the artistic canon. The only differentiating factor between Beeple’s work and other works which are aesthetically and thematically similar is the medium used and, arguably, graphic design lends itself much better to the rendering of fantastical scenes than paint. Ultimately, whilst digital art has received mixed responses, it is arguably one of the few guarantees of the art world that people will question the validity of the next up-and-coming movement. To disregard digital art, NFTs, and their role in the art market simply on grounds of taste may therefore be rash.
Beeple, Everydays: the First 5000 Days, 2021, ctvnews.ca
Now to explore the infamous MetaBirkin Case. In 2021, the independent artist Mason Rothschild, known as MR, created and sold 100 NFT images which depicted digital recreations of the famous Hermès Birkin bag covered with faux fur designs in bold colours, patterns and famous art works, such as the Da Vinci’s Mona Lisa and Van Gogh’s Starry Night.
Hermès subsequently brought charges of trademark infringement, dilution, and unfair competition, as well as cybersquatting against MR. One issue raised by Hermès was MR’s use of the name ‘Birkin’ in association with his NFT images, and the use of the domain name ‘metabirkins.com’ for his associated website, with the former claiming that this led to confusion amongst customers who had mistakenly believed that Hermès was affiliated with the MetaBirkin project. It is worth noting that this was the primary concern of the plaintiff, rather than the use of the iconic Birkin bag design, despite both the name and the design both being registered U.S. federal trademarks. This suggests that whilst the design of MR’s NFTs is undoubtedly similar to the iconic design of the Birkin bag, Hermès was most perturbed by the potential for confusion which the use of the name ‘Birkin’ created, demonstrating a more fiscal concern on behalf of the plaintiff, rather than a protectiveness of their design on the grounds of its merit as a piece of art.
The defendant, MR, then responded by stating that Hermès claims were violating his freedom of artistic expression, protected by the first amendment, and that the project was an inspired commentary of wealth, luxury, consumerism, and the fashion industry. This sentiment is mirrored in a post he made to Instagram following the initial claims, defending his rights and integrity as an artist.
This initial response from the defendant illustrates a clear concern that Hermès’ claims are in violation of his rights as an artist to create art which draws inspiration from fashion culture and the wider world around him. One obvious example of an artist appropriating a brand’s design in order to produce art which comments on consumerism, is Andy Warhol’s Campbell’s Soup Cans from 1962. Warhol’s egregious use of the Campbell’s Soup can design and logo does however pose several differences to MR’s use of the Birkin name and design. Whilst both designs were used by the artists without permission from the company who owned them, MR’s creation did at least feature some changes from the original design, merely co-opting a recognisable luxury item as a canvas for expression. Warhol’s soup cans however do not differ at all from the original Campbell’s design and instead he employed the tactic of multiplicity, reproducing the exact image itself in order to comment on marketing and capitalism in America. Another key difference in these two examples is the brand whose designs were used. In the case of Warhol’s Campbell’s Soup Cans, Campbell’s Soup tacitly approved his use of their iconic logo and design, on account of the free marketing his works were generating. For Campbell’s Soup this allowance certainly paid off, and the image of the humble soup tin has since been catapulted into pop culture stardom. However, for a luxury brand such as Hermès, which is notoriously concerned with maintaining a sense of uniqueness and immediate recognisability, anything which dilutes this can be seriously damaging to their brand and therefor prompt a more serious response. It is also worth noting that in a world of inaccessible designer goods, the Hermès Birkin bag is one of the most inaccessible of all, with the brand taking conscious action to limit the ease with which one can obtain a Birkin bag (through a gruelling series of preceding purchases and grovelling with sales assistants). Therefore it is somewhat presumptuous to assume that a brand which actively controls and limits who can have access to their designs in the physical world, would allow access in the metaverse.
Ultimately, the jury found MR liable on all three counts of trademark violation, awarding Hermès International $133,000 in damages. The jury expressly found that the plaintiff had deliberately sought to confuse customers into believing that the MetaBirkin NFTs were affiliated with the Hermès brand. This notion is certainly supported after it was quoted in the trial that MR had “told associates that he wanted to make ‘big money’ by ‘capitalising on the hype.’” This simple statement completely undermines MR’s previous claims that his project was conceived as an innocent artistic foray into the critique of luxury goods, and that by quashing it Hermès was simultaneously dulling his right to freedom of expression, and instead highlights the real, monetary motivations behind the creation of the MetaBirkin. This clear outing of MR as only interested in piggybacking off an existing luxury item in order to make money is one of the most damning pieces of evidence from this trial. It is interesting to consider whether the trial might have gone differently had MR’s artistic integrity not been seriously questionable.
This is one of the very first cases ruling on digital assets and blockchain NFTs and we are no doubt going to see a rise in similar cases as such things become more popular. Considering this, what are the implications of this trial for both artists and brands? Firstly, brands have learnt that it is likely that patents that exist to protect physical designs, logos and names will transfer to protect their designs in the digital world as well. For artists however, this ruling serves as a stark reminder of the increasing commercialisation of art in the modern world. I think that in this instance, the problem of commercialisation versus artistic expression is particularly difficult, since the designs that Hermès produce are specifically intended to be sold and distributed as saleable goods, rather than to simply exist as pieces of art. Essentially, Hermès is a brand, and they produce products rather than art, giving them an increased desire to protect their commercial interests over artists who produce art as something more than just a physical item to be bought. Therefore I do believe that seeking inspiration from the designs of other artists in order to experiment with new, digital age art is a valid and worthy endeavour, but that in this instance, Hermès must act as a company, rather than an artist, and protect their product. However, with regard to the case against MR, Hermès have said that they are going to create their own NFTs. This suggests two things: firstly, it suggests that NFTs are for the rich; their already hefty price tags make them fairly inaccessible as it is and adding the layer of exclusivity that their being produced by Hermès will no doubt add, only increases the issue. Secondly, it suggests that digital art NFTs do not, at the moment, perform the same functions as art in that they are purely a medium for creative expression, but instead they are digital commodities which can be produced and sold by a brand, similar to any other physical luxury item. It will be interesting to see how more brands and artists utilise NFTs, and the directions they take them in.
Further reading on NFTs and the MetaBirkin case: