When Irene Calboli, Professor of Law at Texas A&M University School of Law and fellow scholar Gabrielle Armstrong wrote that design patents are the under‑used superhero of fashion protection, nobody expected a courtroom drama to turn that theory into headline news.
That drama unfolded in New York’s federal courts, where Hermès International took on digital artist Mason Rothschild (real name Sonny Estival) over a series of NFT renditions called “MetaBirkins.” In May 2022, the Federal District Court of New York refused to toss the case, and a February 2023 jury verdict handed Hermès a $133,000 judgment – $110,000 for trademark infringement and $23,000 for cybersquatting.
Why fashion’s existing IP toolbox feels like Swiss‑army knives with missing blades
U.S. designers can lean on three main instruments: copyrights, trademarks, and design patents. Copyrights guard the expression of a work but stumble when faced with purely ornamental clothing features. Trademarks, on the other hand, protect brand identifiers – think Chanel’s interlocking "C" or Nike’s swoosh – and have already shaped battles like Yves Saint‑Laurent versus Christian Louboutin over red‑sole shoes.
Intellectual property in fashion is a patchwork, and design patents are the only tool that specifically shields non‑functional, ornamental aspects of an article. They shine for accessories that outlive a single season – handbags, shoes, sunglasses – offering protection that often outlasts a copyright’s 95‑year term after publication. Yet, as Calboli and Armstrong note, the cost and the 18‑to‑24‑month waiting period keep many designers from filing.
The Hermès v. Rothschild case – a landmark for the metaverse
Rothschild’s “MetaBirkins” were not just pixelated jokes; they were marketed as limited‑edition collectibles, complete with a virtual price tag that mirrored the real‑world luxury bag. Hermès argued – and the jury agreed – that the NFTs infringed the brand’s trademark and diluted its reputation.
The court’s language was clear: “The First Amendment does not apply to the marketing of MetaBirkins.” That line set a precedent that even in a decentralized digital realm, traditional trademark rights apply. The $133,000 judgment is modest compared with typical luxury litigation, but its symbolic weight is huge – it signals that luxury houses will guard their symbols, whether stitched in leather or rendered in code.
Fast fashion’s dupe dilemma
While luxury brands scramble to protect their digital footprints, fast‑fashion giants like Shein and Steve Madden face mounting scrutiny for churning out “dupes” that mirror runway designs within weeks. Social‑media‑driven demand means a designer’s sketch can become a global bestseller before the original collection even hits the runway.
Legal scholar Jessica Abounaja, founder of Abounaja IP in Houston, warns that counterfeiting isn’t just a legal nuisance – it erodes brand equity and stifles innovation. She points out that existing IP statutes were drafted before the era of instant viral trends, leaving a gap that fast‑fashion platforms exploit.
Proposed reforms: From proactive filters to specialized courts
Series of legislative proposals aim to force platforms and manufacturers to act before infringement spreads. One draft would require large‑scale retailers to install AI‑driven “filter‑and‑remove” systems that scan uploaded designs for copyrighted elements, offering rights‑holders a simple takedown request mechanism. Companies that repeatedly fail could face heightened fines – a move likened to the “notice‑and‑takedown” regime for online piracy.
Some experts, writing in the Louisiana Law Review, argue that the United States needs a dedicated fashion‑law circuit, similar to the Court of International Trade, to ensure consistent rulings. Such a court could develop expertise around nuanced issues like the line between inspiration and imitation, or how virtual goods intersect with traditional trademark doctrine.
Platform responsibility: TikTok, Amazon, and the dupe culture
Influencers on TikTok and sellers on Amazon often showcase “look‑alike” outfits that skirt the edge of illegality. Critics argue that without clearer guidelines, these platforms become inadvertent amplifiers of infringement.
Industry analysts predict that as the metaverse matures, the line between physical and digital fashion will blur further, making enforcement even trickier. The Hermès win may encourage other luxury houses to pursue similar actions against virtual replicas, potentially prompting a wave of litigation that could finally push lawmakers to close loopholes.
What’s next for fashion IP in America?
In the short term, designers are likely to reassess their protection strategies, weighing the upfront cost of a design patent against the long‑term security it offers. At the same time, fast‑fashion retailers may lobby against mandatory AI filters, citing “innovation stifling.”
Long‑term, the convergence of physical and digital wardrobes could force a re‑imagining of what “ownership” means in fashion. If courts continue to treat NFTs as ordinary goods for trademark purposes, the next frontier may be the regulation of virtual‑only designs – an area still largely uncharted.
Frequently Asked Questions
How does the Hermès verdict affect other luxury brands?
The ruling confirms that trademark rights extend to digital replicas, meaning luxury houses can sue over NFTs that copy iconic designs. Expect more litigation as brands seek to protect their virtual extensions.
Why are design patents under‑used in the fashion industry?
Filing a design patent costs several thousand dollars and can take up to two years to issue. For fast‑moving collections, many designers deem the timeline and expense prohibitive, opting for cheaper copyright or trademark protection.
What legal risks do fast‑fashion companies face when selling dupes?
They risk trademark infringement suits, copyright claims, and potential penalties under any future legislation that mandates pre‑emptive filtration of infringing designs. Recent cases have shown courts are willing to award damages even for short‑run items.
Can platforms like TikTok be held liable for promoting dupe content?
Under current U.S. law, platforms are generally protected by the safe‑harbor provisions of the DMCA, but new proposals aim to narrow that protection if they fail to implement effective anti‑infringement tools.
What might a specialized fashion‑law court accomplish?
A dedicated court would build expertise in distinguishing inspiration from imitation, streamline case law, and provide clearer guidance for both designers and fast‑fashion retailers, reducing uncertainty in IP enforcement.
Comments
Dennis Lohmann
Hey everyone 😊, great rundown on the Hermès case! The way you broke down design patents vs trademarks really helps newbies understand the stakes. Looking forward to more insights.