Briefing: February 10, 2023

The biggest news this week comes by way of the outcome of the MetaBirkins jury trial, which pitted Hermès against Mason Rothschild over the latter’s sale of NFTs tied to imagery depicting furry Birkin bags, which he titled, “MetaBirkins.” On day 3 of deliberations, the 9-person jury returned a pro-Hermès verdict, finding that Rothschild is liable for TM infringement & dilution, as well as cybersquatting in connection with the domain. The jury further found that the First Amendment does not shield Rothschild from liability, and awarded Hermès $110,000 for profits earned from his sale of the NFTs & $23,000 in damages for cybersquatting. (No word yet from the court on injunctive relief.)

Among other things, the outcome suggests that – in this case, at least – “real world” TM rights in well-known marks will transition somewhat neatly to the virtual world w/o companies needing to show web3 and/or metaverse use or registrations; the jury here seems to have found it likely that consumers will associate TM-bearing digital goods with the same source that produces the physical equivalents. It’s worth noting that the jury did inquire during deliberations about when Hermès filed its NFT/web3-focused TM application for Birkin. That info wasn’t in evidence – but we know the co. filed a trio of applicationsfor virtual uses in Aug. 2022.

Rothschild relied on the Rogers test as the crux of his defense, and the jury was instructed on it – even though they ultimately found that the test does not bar liability for the MetaBirkins-maker. The jury instructions are what appear to be the most immediate basis for Rothschild’s appeal, with Lex Lumina’s Chris Sprigman tweeting this week that the court bungled the instructions with regards to the Rogers test …

The Bottom Line: “This case is only one data point on the ever-evolving Web3 landscape,” per Michael Best & Friedrich LLP’s Laura Lamansky, and it will inevitably be shaped further by additional NFT cases and the outcome in the Bad Spaniels case. Either way, she says that “it certainly provides brand owners a sigh of relief, while hopefully giving artists pause as they consider their work in the metaverse.

In other litigation news … 

– Hunley v. Instagram: Photographers Alexis Hunley & Matthew Brauer called on the 9th Cir. to revive their class action in an oral arg. on Feb. 6 in a (c) case that could bring an end to the server test.

– Yuga Labs v. Hickman: Yuga Labs settled the short-lived false designation of origin & cybersquatting case that it filed against Thomas Lehman, who allegedly developed the “” website & other elements of the RR/BAYC project that is at the center of a separate Yuga-initiated case. (See the consent judgment & order for injunction here.)

– Dfinity v. Meta: Meta has escaped the TM suit waged against it last year for allegedly co-opting Dfinity’s infinity logo. A Meta spokesperson said this week that Dfinity dropped the case after it “pointed out the defects” in the amended complaint.

– Meta is still facing a separate TM case over the Meta word mark, with a smaller (but older) company named Meta, accusing the Facebook and Instagram-owner of reverse confusion.

– Tesco color clash: Hearings in the Tesco v. Lidl case started this week in London. A yellow circular design w/ a blue background – which Tesco first adopted & Lidl has since started using – is at the center of the clash.

On the AI front

With so much talk about AI and how it can be used in fashion, here is what Chinese e-commerce entity SECOO says it is up to …

As for branding … Burberry debuted its revamp under new creative director Daniel Lee this week, bringing back the Prorsum horse-and-knight logo that it seemed to do away with in the wake of longtime creative director Christopher Bailey tenure. The newly-stylized Burberry word mark seems to suggest that the overarching “blanding” trend – which Burberry actually helped usher in back in 2018 – may be on its way out.

On the flip side, if Phoebe Philo’s branding is any indication, maybe not. Philo revealed this week that her new eponymous label – which is partially backed by LVMH – will be unveiled in Sept.

And in a bit of deal-making news this week … London-based Africa-focused platform Jendaya has raised £1 million in pre-seed funding to build out a platform that acts as “a gateway for global luxury brands to the African continent & for consumers in the rest of the world to discover African brands.”