Hermès secures another win in MetaBirkins case – Cattelan’s banana not infringing copyright

Hermès confirms trade mark win in MetaBirkins case

New developments occurred last week in the high-profile Hermès vs MetaBirkins case, which we reported on several times in the past months (see here, here and here).

In a nutshell, in early 2022, the French company had sued the American artist Mason Rothschild for creating and commercialising around 100 NFTs extremely similar to its notorious “Birkin” bag. Rothschild’s NFTs, called “MetaBirkins”, had turned out to be very successful in the Metaverse and had been sold for the equivalent of thousands of euros each. As a consequence, Hermès had sued the artist for trade mark infringement and cybersquatting, on the grounds that he was using the name “Birkin” and had registered and was using the domain name “MetaBirkins.com”, obtaining an economic revenue and taking unfair advantage of the reputation of the luxury brand.

In February this year, after a 6-day trial, a US jury found that Rothschild had indeed infringed Hermès’ trade mark. Hermès was consequently awarded $133,000 in damages.

However, despite the jury’s verdict, Rothschild continued to market its MetaBirkin NFTs. For this reason, Hermès filed a new petition in March, asking the court for a permanent ban over these activities. Hermès also requested that the remaining NFTs be turned over along with any post-trial profits.

Rothschild’s defence argued once again (as it did during the first trial in February) that its activities were protected under the first amendment of the US Constitution (protecting free speech and in particular artistic expression).

On Friday last week, a US federal judge granted Hermès’ request and issued a permanent injunction barring Rothschild from marketing the MetaBirkin NFTs any longer. The judge insisted on the fact that such an injunction was necessary as Rothschild’s activities were likely to be confusing consumers and hence causing irreparable harm to Hermès. In line with what was said in the previous trial, the judge further confirmed that nothing in the first amendment allowed Rothschild to give the impression that the NFTs were coming from or endorsed by Hermès itself. The judge however decided against ordering that Rothschild transfer the tokens.

The MetaBirkins saga is one of the very first cases to reach the courts with issues linked to IP infringement in the Metaverse. It will likely not be the last, so we will keep an eye out for further developments in this field!

Cattelan’s banana does not infringe copyright, says a US court

As we reported last summer, Italian visual artist Maurizio Cattelan was sued last year for copyright infringement – and the much-anticipated court decision on this case was finally released a couple of weeks ago in Florida.

The artwork at the centre of the dispute is Cattelan’s world-famous “Comedian”, commonly known as “the” banana duct-taped to a wall. The artwork was exhibited in 2019 at Art Basel Miami, in Florida, and was sold for $120,000.

Following this, artist Joe Morford alleged that Cattelan had infringed his own 2000 artwork “Banana & Orange”, which was registered with the US Copyright Office and published on social media. The artwork was pretty similar to Cattelan’s “Comedian” as it also involved a banana duct-taped to a wall – however, some differences exist between both works (the wall is green in Morford’s work, there is a second fruit – an orange – above, the positioning of the fruit differs slightly, Morford uses plastic objects instead of real fruit…). Morford therefore sued Cattelan for copyright infringement, seeking $390,000 in damages.

Two weeks ago, a Miami federal judge ruled in favour of Cattelan, finding that Morford had not produced enough evidence to prove that Cattelan could have seen his work before creating “Comedian”. Additionally and interestingly, the judge found that most similarities between both works related to elements that were not protectable by copyright.

While this is a US ruling governed by US law, this decision is an interesting illustration of the basic principle of copyright law according to which copyright never protects ideas, but can only protect their expression if creative and original enough. In the case at hand, the judge considered that the mere idea of "affixing a banana to a vertical plane using duct tape” was not protectable by copyright.

The judge therefore focused on the few elements of the original work that it considered eligible for copyright protection (the work was successfully registered at the US Copyright Office, hence its overall protectability by copyright not being debated in detail): the green background, the masking tape used as a picture frame, the angle at which the banana was taped… and concluded that both works differed when it came to those copyrightable details. The lawsuit was therefore dismissed.

This is not the only time that Cattelan’s banana has made the headlines this year: a few weeks ago, a Seoul art student started a “banana drama” when he detached the banana from the wall of the Leeum Museum of Art in Seoul, which was exhibiting “Comedian”… and ate it “because he was hungry”. Upon being informed of the incident, Cattelan simply stated that there was “no problem” – the banana in “Comedian” is in any case replaced every few days.