Don’t tell Mason Rothschild he’s a forger, he calls himself an artist, therefore misunderstood. “I do not create fake bags. I have designed works of art representing imaginary Birkin bags covered in fur. The First Amendment gives me the right to create and sell works representing Birkin bags, as Andy Warhol the did with Campbell’s soups”, poured out the American on social networks.
Pursued by the leather goods maker Hermès, Sonny Estival (his real name) lost his infringement lawsuit in February. Lawyers for the luxury house argued that these digital works backed by NFTs (non-fungible tokens, in French), a device that guarantees their authenticity and traceability, caused “confusion” in the minds of the public. That Rothschild was only a “digital speculator” seeking to enrich himself through the “scam” constituted by his trademark “Metabirkin”. And that he was explicitly inspired by an iconic model worth 9,000 dollars in stores, while his pixelated bags sold between 5,000 and 165,000 dollars in the metaverse, their rating climbing with the buzz aroused by the litigation.
In total, the artist would have pocketed more than 1.1 million dollars, according to the documents that the firm produced during the trial. That is much more than the 133,000 dollars in damages to which the New York court condemned him. Hermès, although victorious, has since extended the scope of its trademarks to include digital collectibles, cryptocurrencies and NFTs. Scalded cat…
This case is a new avatar of the complicated relationships that brands have with artists. Sources of inspiration and collaboration, the latter sometimes enjoy hijacking logos and models, without asking the rights holders for their opinion. “Web 3.0 opens up new opportunities for creators, but does not protect them from prosecution. In this case, the American judge considered that the ‘Metabirkin’ were products and not works”, notes Anne-Sophie Leroi, lawyer specializing in trademark law. The fact that Rothschild registered his own brand probably did him a disservice by questioning the sincerity of his approach.
Brands fear playing censors
Until now, in the real world, battles of this order have rarely been settled in court. “From the 2000s, brands understood that this could be counterproductive, because public opinion supports artists”, explains Géraldine Michel, director of the brand and values chair at the IAE Paris Sorbonne and coordinator of the book. When artists take over brands (Dunod). Symbol of this reversal, the Louis Roederer affair. In 2006, the champagne house regretted the “unwelcome attention” enjoyed by its consumed Cristal cuvée and evoked in a bling-bling way in rap clips. Threatened with a boycott by producer and rapper Jay Z, Louis Roederer had to split a press release affirming his openness “to all forms of creation”. Since then, the lesson has been learned. Thus the street artist Zevs was able to quietly decline his “Liquidated Logos” series in which he drips famous logos onto the walls and canvases. “Even Chanel, however very finicky, did not react. A manager admitted that at another time, they would have retaliated”, continues Géraldine Michel.
Brands fear all the more to pass for censors that they multiply, moreover, official associations with singers, actors or graffiti artists. In addition, diversions often feed the cult. In 2021, the American rapper Lil Nas X designed, in partnership with the collective of creators MSCHF, a limited series of 666 Nike sneakers on which were affixed satanic mentions in connection with the universe of the artist, but without the manufacturer’s authorization. Following an amicable agreement with the sports equipment manufacturer, the troublemakers simply undertook to reimburse these “Satan Shoes” to buyers who requested it. What increase their rarity, and their price: initially sold 1018 dollars, their value has more than doubled today on eBay…
What will happen if tomorrow committed artists point out through their work, real or virtual, the shortcomings of companies in terms of environmental or social responsibility? Mason Rothschild failed to convince the court that his fur-adorned “Metabirkin” were aimed at exposing animal abuse. But it may be that others, more sincere, one day take this path. With a good chance that the right of expression then prevails over trademark law.