In an opinion Wednesday, Judge Rakoff allowed the handbag maker Hermés to proceed with a trademark suit against the individual responsible for a series of non-fungible tokens (“NFTs”) associated with digital images of “faux-fur-covered versions” of Hermés’s “Birkin” handbag. An example of a “MetaBirkin” image is below:
The defendant argued that he has a First Amendment right to title his work after the famous bag, relying on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which dismissed claims against a movie that was titled “Ginger and Fred” but was not in fact associated with Ginger Rogers or Fred Astaire.
Judge Rakoff ruled that the protections of the Rogers decision were inapplicable because Hermés alleged that the defendant “intended to associate the ‘MetaBirkins’ mark with the popularity and goodwill of Hermés’s Birkin mark.” For example, the defendant told a news outlet: “for me, there’s nothing more iconic than the Herm[e]s Birkin bag. And I wanted to see as an experiment if I could create that same kind of illusion that it has in real life as a digital commodity,” adding that the difference between owning the bag and an NFT was “getting a little bit blurred now because we have this new outlet, which is the metaverse, to showcase, showcase them in our virtual worlds, and even just show them online.”