Are Brands Protected In the Metaverse? Hermes and NFT Artist Spar In US Court (theguardian.com) 33
An anonymous reader quotes a report from The Guardian: Pictures of 100 Birkin bags covered in shaggy, multi-colored fur have become the focus of a court dispute that will decide how digital artists can depict commercial activities in their art and cast new light on whether brands are protected in the metaverse. In the case, being heard this week in a New York federal courtroom, the luxury handbag maker Hermes is challenging an artist who sells the futuristic digital works known as NFTs or non-fungible tokens. Artist and entrepreneur Mason Rothschild created images of the astonishingly expensive Hermes handbag, the Birkin, digitally covered the bags in fur and turned the pictures into an "art project," which he called MetaBirkin. Then he sold editions of the images online for total earnings of more than $1m, according to court records.
Hermes promptly sued, claiming the artist was simply "a digital speculator who is seeking to get rich quick by appropriating" the Hermes brand. The "Metabirkins brand simply rips off Hermes's famous Birkin trademark by adding the generic prefix "meta," read the original complaint filed by Hermes in January last year, noting that the "meta" in the name refers to the digital metaverse now being pumped by technology innovators as the next big thing in tech profit-making. Rothschild, whose real name is Sonny Estival, countered that he has a first amendment right to depict the hard-to-buy, French handbags in his artwork, just as Andy Warhol portrayed a giant Campbell's soup cans in his famous pop culture silk screens. "I'm not creating or selling fake Birkin bags. I'm creating art works that depict imaginary, fur-covered Birkin bags," said Rothschild in a letter to the community after the case was filed. "The fact that I sell the art using NFTs doesn't change the fact that it's art." "One hurdle that Hermes will have to overcome in the case is the fact that US trademark law requires brands to register their trademarks for each specific type of use, so digital sales might require a separate registration," notes the report.
"In the end, [Michelle Cooke, a partner at the law firm Arentfox Schiff LLP, who advises brands on these types of trademark issues] says the decision might come down to whether the jury believes Rothschild did the MetaBirkin project as an artistic project 'or was it a money-making venture that he cast as an artistic project when he got into trouble.'"
Hermes promptly sued, claiming the artist was simply "a digital speculator who is seeking to get rich quick by appropriating" the Hermes brand. The "Metabirkins brand simply rips off Hermes's famous Birkin trademark by adding the generic prefix "meta," read the original complaint filed by Hermes in January last year, noting that the "meta" in the name refers to the digital metaverse now being pumped by technology innovators as the next big thing in tech profit-making. Rothschild, whose real name is Sonny Estival, countered that he has a first amendment right to depict the hard-to-buy, French handbags in his artwork, just as Andy Warhol portrayed a giant Campbell's soup cans in his famous pop culture silk screens. "I'm not creating or selling fake Birkin bags. I'm creating art works that depict imaginary, fur-covered Birkin bags," said Rothschild in a letter to the community after the case was filed. "The fact that I sell the art using NFTs doesn't change the fact that it's art." "One hurdle that Hermes will have to overcome in the case is the fact that US trademark law requires brands to register their trademarks for each specific type of use, so digital sales might require a separate registration," notes the report.
"In the end, [Michelle Cooke, a partner at the law firm Arentfox Schiff LLP, who advises brands on these types of trademark issues] says the decision might come down to whether the jury believes Rothschild did the MetaBirkin project as an artistic project 'or was it a money-making venture that he cast as an artistic project when he got into trouble.'"
Andy Warhol (Score:2)
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You can't use trademarks without the trademark owner's permission.
That statement is a bit too broad, as there are some contexts where it is permissible to use a trademark without permission.
"In the metaverse" is the new "on the internet" (Score:5, Insightful)
These same questions were asked 20+ years ago when the internet was gaining popularity. There's no need to create new laws just because of "the metaverse" or "the internet". The medium of communication shouldn't define whether or not these activities are legal or not. If it's illegal on paper, then it's illegal on the internet, and it's also illegal in the metaverse. Can I draw a picture of these handbags and sell it as art? If yes, then I should be able to do the same on the internet, or in the metaverse. If not, then there's no reason simply doing so on a different medium would make it illegal.
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Information superhighway.
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The metaverse IS part of the internet, as a shitty second life clone.
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If you use two words that were ran to the ground that hard at the same time, you may get so low you end up getting an integer overflow and ends up on the top.
Confusion, Effect on brand value (Score:3)
If you are setting out to deliberately confuse people then your use of someone else's trademark is illegal, no matter what else is true.
If the effect of your use of a trademark is that it reduces the value of the trademark, my understanding is that's also illegal.
Whether the trademark applies to digital goods is another question, albeit a stupid one. The problem of course is that lawmakers are getting rich on "that, but on a computer" patents like everybody else, and what precedents apply to one kind of IP tends to affect the other kinds as well.
For the record, I think it's absolutely insensible to imagine anything other than the same trademarks which apply to physical goods applying to representations of them in VR. It's not like the VR world is a different world in fact, it's just a shitty game that exists in this world.
Re: Confusion, Effect on brand value (Score:2)
If a virtual world allows you to snap a photo of yourself to generate an avatar, you'd likely be allowed to carry a birkin and have it digitized as fair use. This is a relatively straightforward extension of the fair use you have to take pictures of trademarks and post them to Facebook.
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If a virtual world allows you to snap a photo of yourself to generate an avatar, you'd likely be allowed to carry a birkin and have it digitized as fair use.
What part of "fair use" would apply to this situation? To whom would it apply?
Of course they should be... (Score:4, Insightful)
Re: Of course they should be... (Score:2)
Trademarks protect a particular industry. When real bags start competing with virtual bags, you'll have a point.
Trade Mark Law (Score:3)
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I contacted a Trade Mark attorney last year about registering a 100 year-old, abandoned logo I use on my art. It soon became clear to me that Trade Mark law is a scam written by attorneys to enrich attorneys. There are a hundred different categories that each require paperwork, attorney, and government fees. The cost quickly becomes astronomical and out-of-reach for any small business. Trade Marks never enter Public Domain even if they are abandoned by the original owners. Trade Marks law is only useful to mega corporations with a bullpen of bored lawyers. A small operator like myself is better off using any logo I please and hope to never be successful enough to attract the attention of the Trade Mark owner.
While you're correct that TMs never technically enter public domain after a specific timeframe, if an old TM is no longer being enforced you can use it or something very similar but you'll have to register that trademark as new for the specific categories it will be used in. Also keep in mind that there are both state and federal level registrations.
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Also keep in mind that there are other countries with their own lawyers outside of the U.S.A., so don't limit yourself to American states and American federal registrations.
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You have to actually use a mark before you can register it. If you insisted that she register the mark beforehand, it's possible that she just didn't want to deal with you.
The cost quickly becomes astronomical and out-of-reach for any small business.
Putting a little 'tm' or 'sm' next to your logo is all most people really need, and the cost of that is negligible. The average small business isn't going to need to actually register their trademark.
A small operator like myself is better off using any logo I please and hope to never be successful enough to attract the attention of the Trade Mark owner.
How about you don't use someone else's trademark? Is that so hard? (Remember: if it's been abandoned, then there is no "owner". What do
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Teefury had a great business model - using print on demand. They'd make teeshirt designs parodying just about everyone great and small, and then they'd offer them on their website for only 24 hours complete with ticking clock.
When the inevitable DMCA Takedown notice came in, the content was already gone.
"Metaverse." Stop talking outta your ass. (Score:2)
"covered the bags in fur" (Score:3)
He turned those Birkins into merkins!
Campbell Soup and Warhol (Score:3)
For me, and IANAL, the question would be "Does the art have the same value if the Birkin TM was eliminated?" If yes, then I can see the argument he is using the trademark in a way that violates Birkin's rights. OTOH, it is an original creation and could be considered satire; which is why lawyers get rich in such disputes.
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The copyright holder can decide how their work can be used, and are free to grant permission.
The same goes for trademarks -- a company can grant an entity to use a trademark if they so wish. I remember Second Life did it when somebody did a parody website with a modified logo. Everyone thought SL would send a cease and desist, but instead they gave them limited permission to use the modified logo. I think it was pretty clever -- they got some community goodwill points from it and some news posts with no dow
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The copyright holder can decide how their work can be used, and are free to grant permission.
The same goes for trademarks -- a company can grant an entity to use a trademark if they so wish.
Exactly; which is why TFA's reference about the artist using Campbell Soup and Warhol to defend his actions is irrelevant, IMH(non-legal)O.
Nice try but he will lose (Score:2)
In plenty of other instances that have gone through court, no, you can't make money copying someone's IP. Go try it with Disney IP and see how long you last.
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I think Campbell's realized they were better off not pissing off the Men in Black.
Stupid people paying too much for stupid things... (Score:3)
Similar to domain names (Score:2)
This question already arose when domain name squatters became commonplace. They reserved names of prominent companies, hoping to cash in when those companies eventually decided to buy the domain name from them. Guess what, those trademarks were still enforceable, even though the domain name registry didn't enforce them. Lawsuits forced the squatters to give up those names.
Metaverse names are no different. Just because they're in a fictitious place called "the metaverse" doesn't make them out of the reach of
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