美国法院判决NFT上使用MetaBirkin品牌侵犯了Birkin商标权 - 爱马仕诉Mason Rothschild案

爱马仕（Hermès）在美国起诉Mason Rothschild在NFT产品上使用 "MetaBirkin"商标一案，一审判决最近已作出，爱马仕胜诉。根据这一具有里程碑意义的判决，商标所有人有权阻止他人在NFT产品上使用有冲突的品牌，并且可以放心地在数字世界中保护其商标并维权。本案例对艺术家和其他主体在这一领域（指元宇宙）利用有冲突的品牌来销售其作品也是一个警告。

A first instance decision has just issued confirming that Hermès has succeeded in their US lawsuit against Mason Rothschild regarding use of “MetaBirkin” in relation to NFTs.  This landmark decision shows that trade mark owners can prevent third parties from using conflicting brands in relation to NFTs and will offer them comfort to protect and enforce their trade marks in the digital world. The case acts as a warning to artists and other parties in using conflicting brand names to sell their works in this space.

以下进一步展开讨论。

We discuss this further below.

案件起由是Mason Rothschild将MetaBirkin商标使用在基于爱马仕知名的Birkin手袋的样式而设计出来的NFT数字手袋产品上。

The action was brought against Mason Rothschild’s use of the trade mark “MetaBirkin” on NFTS with digital bag designs based on famous designs Hermès Birkin bags.

判决认为，以这种方式使用MetaBirkin商标，侵犯了爱马仕对Birkin的商标权。判决认定NFT产品不属于“受（言论自由）保护的艺术作品”，因此构成对爱马仕的商标权的侵权。

The decision concluded that use of the MetaBirkin trade mark in this way violated Hermès rights in the Birkin trade mark. The NFTs were held not to quality as ‘protected art’ and therefore were held to infringe Hermès’ trade mark rights.

虽然爱马仕尚未提供自己的NFT产品，但爱马仕主张已制定了这样的计划，而Rothschild对“MetaBirkin”的使用会削弱他们进入这一领域的能力，致使消费者可能会对Rothschild的NFT产品的来源产生混淆，并且，使用“MetaBirkin”也会损害Birkin品牌的声誉和排他性。

Whilst Hermès does not yet offer its own NFTs, it argued that it had developed plans to do so and that Rothschild use of “MetaBirkin” would hamper its ability to move into this space such that consumers were likely to be confused as to the origin of Rothschild’s NFTs and that use of the “MetaBirkin” brand would damage the reputation and exclusivity of the Birkin brand.

Rothschild辩称，其有权出售NFT产品上附着的艺术作品，在这种情况下使用“MetaBirkin”并不侵权。

Rothschild had argued that it was entitled to sell the artworks attached to the NFTs and in that context use of “MetaBirkin” was not an infringement.

法院乃至陪审团在本案需考虑的关键问题是美国商标法采用的“Rogers 测试”标准。根据这一测试标准，如果争议商标与被诉作品没有艺术上的关联性，或者该作品在来源或内容上明显具有误导性，则可适用商标权保护来防止未经授权而使用有冲突的商标。

The key question that the Court and, ultimately, the jury, were asked to consider was under the so-called “Rogers test” applied in US trade mark law. According to this test, trade mark protection can be used to prevent unauthorised use of conflicting trade marks if the trade mark has no artistic relevance to the underlying work, or if the work explicitly misleads as to the source or content of the work.

因此，关键问题是消费者会如何看待本案争议作品。为了支持案件，爱马仕提交了一系列证据，包括调查显示“MetaBirkin”与Birkin品牌存在来源混淆。

As such the key question was how consumers would perceive the work. In support of their case, Hermès relied on a range of evidence including surveys indicating confusion between the origin of the “MetaBirkin” and the Birkin brand.

在本案中，陪审团认为Rothschild的行为确实通过了“Rogers测试”，使消费者对产品来源产生了误认，而Rothschild使用相关的“MetaBirkin”的域名来销售作品，则构成了“域名抢注”。

In this case the jury found that Rothschild’s actions did pass the “Rogers test”, such that consumers were misled as to the origin of the products and that through use of related “MetaBirkin” domain names to sell the works, Rothschild was “cybersquatting”.

本判决可能有助于品牌所有者在现实和虚拟世界之间的模糊界限中游刃有余，并对艺术家如何销售其作品产生影响。本案表明，像在现实世界中一样，知识产权在数字世界中也能适用并维权，并且采用相同的评估测试标准（即混淆的可能性、声誉等）。

The decision may assist brand owners in navigating the blurred line between the real and virtual worlds and has implications for how artists can sell their works.  This case suggests that IP rights should apply and be enforced in the digital world as they are in the real world and indicates that the same tests (i.e. likelihood of confusion, reputation, etc.) should be applied in making this assessment.

本案的关键在于消费者是怎么看使用“MetaBirkin”品牌名称来销售作品的。许多时装公司和品牌也积极在虚拟空间提供其品牌的NFT产品，这就增加了混淆的可能性，消费者可能会期待冠以冲突品牌名称的NFT产品实际源自品牌所有者。

The key here was the perception of consumers concerning use of the “MetaBirkin” brand name used to sell the works. Many fashion houses and brands also actively offer NFTs of their branded goods in the virtual space adds to this possibility of confusion and consumers might expect NFTs sold under conflicting brand names to originate from the brand owner.

因此，不同于在画廊中创作和展示的传统艺术品，艺术家和品牌在以相同或冲突的品牌名称来销售NFT产品时，可能会被视为竞争对手，这正是该判决背后的主要理由。

As such and unlike in the case of traditional art created and displayed in galleries etc. artists and brands might be seen as competitors in selling NFTs under the same or conflicting brand names and this is the main reasoning behind the decision.

本案显然给艺术家们带来了重要的警示提醒。不过，重要的是要记住，本案判决并不太关注所创作的艺术作品，而更关注的是作品面向消费者时的品牌和“包装”方式。

There are clearly important considerations for artists raised by this case. However, it is important to remember that this decision is not so much concerned with the art that was created but the way in which it was branded and “packaged” to consumers.

本案的关键因素不仅仅是在作品中使用了Birkin手袋的图像或形象，而且称它为 "MetaBirkin"，并注册及使用了“MetaBirkin”域名来销售作品。综合考虑这些因素，包括爱马仕提供的Rothschild在一则回复短信中将他的NFT项目称为 "金矿"的证据，以及显示爱马仕Birkin品牌名称的价值推动了（消费者）对产品的兴趣以及产品的销售收益的证据，是认定侵权的关键。

In this case, key factors were not just that an image or depiction of a Birkin handbag used in the artwork, but it was called “MetaBirkin” and a domain name using “MetaBirkin” was registered to sell the works.  This combination of factors, including text messages from Rothschild relied on as evidence by Hermès referring to his project as a ‘goldmine’ and evidence showing it was the value Hermès of Birkin brand name which drove interest and revenue generated by sale of the works was key in finding infringement.

有鉴于此，艺术家需要谨慎使用品牌名称来销售他们的作品，即使本案表明，很难将艺术作品的名称与用于宣传的品牌拆分开来。

As such, artists need to take care in use of brand names to sell their work even if this case shows the difficulty in splitting the subject of the artwork and the brand used to promote it.

Rothschild已表示对判决提出上诉，因此本案故事还未结束，专业法官是否会做出不同于陪审团的裁定，值得关注。

Rothschild has indicated an intention to appeal the decision so the story is not over and it will be interesting to see if a different decision is issued by a specialist judge rather than a jury.

同时，品牌所有者将看到确保其商标在这个领域（指元宇宙）受到保护的价值。在NFT产品和虚拟商品上获得商标保护，将提供一个"先发优势"。本案判决可能会引发品牌所有者将来采取类似的维权行动。

Meanwhile brand owners will see the value in ensuring their trade marks are protected in relation to this space. There is a “first-mover advantage” in securing protection for trade marks in relation to NFTs and virtual goods and this decision might spark similar enforcement actions to be taken by brand owners in future.