Michelle Gery
It was only a few weeks ago when Hermès won a major legal battle over controversially entitled “MetaBirkin” NFTs, when a jury found that NFT images of Birkins constituted trademark infringement.[1] And yet, Hermès seems destined to face further Birkin-related legal challenges. Most recently, Filipino designer Xylk Lorena created a heavy-duty grocery bag with a photo-printed image of a Birkin.[2] The bags were met with significant demand, and exploded in popularity on social media.[3]
However, on February 2, 2023, Lorena discovered that his brand’s Instagram account had been taken down, and his Shopify account was deactivated as well.[4] Although the designer has as of yet not received a cease-and-desist demand from Hermès, he did get a letter from Shopify accusing the account of using copyrighted names, which Lorena points out is inaccurate.[5] Not only did Lorena never explicitly use the Birkin or Hermès name on the shopping bags, but the use of the Birkin name or images of the Birkin would fall within the realm of trademark infringement rather than copyright.
Lorena has defended himself, stating that he will not cease to sell the contested grocery bags, and actually plans on creating more grocery bags with images from other big luxury labels.[6] He sees his bags as a means of democratizing fashion, telling HighSnobiety that the tendency of luxury houses to exclude consumers by making goods prohibitively expensive is “...classism built on racism. Like, we’re gonna make everyone want this but only a certain type of person can have it? The Grocery Bags are me saying, 'No, we can have it too.'”[7]
Screen-printed images of famous works of art are hardly a novel conception. A similar issue was recently before the Supreme Court in Warhol v. Goldsmith, though that case involved copyrighted works rather than trademarks.[8] The Court looked at Andy Warhol’s use of photographer Lynn Goldsmith’s photographs of Prince, which Warhol created screen printed works based on.[9] Under copyright doctrines, the Court will soon answer whether or not Warhol’s works constituted fair use of Goldsmith’s photographs.
Interestingly, Lorena has stated that his bags will shift from using photographs of Birkins to “hyper-realistic” drawings of the Birkin so that he will own the images in their entirety.[10] This distinction highlights the interesting differences between a product which is granted trademark protection, and a work of art granted copyright protection. While the Birkin bag itself is granted only trademark protection, because it is a utilitarian object and not considered a work of art for copyright purposes, presumably the drawings of the Birkin which Lorena will own would indeed be granted copyright protections.
Lorena’s case seems similar to Warhol’s, at first glance- Warhol used Goldsmith’s photographs in screen printed works, and Lorena has used screen printed images of the Birkin bag on his products. However, because of the aforementioned distinction and inability for the Birkin to qualify for copyright protections, if Hermès sued Lorena, the cases would be decided under entirely distinct bodies of law.
If Hermès were to take legal action against Lorena, the relevant legal test would be the consumer confusion test established in Polaroid Corp. v. Polarad Elecs. Corp.[11] This test looks to balance the public interest in free expression against the likelihood that consumers will confuse a good like Lorena’s grocery bag with the actual Birkin. The test incorporates factors including the strength of the plaintiff’s mark, the similarity of the marks, the competitive proximity of the products in the marketplace, evidence of actual confusion, and the junior user’s bad faith in adopting the mark.[12]
Although further factual evidence would obviously be necessary to evaluate such a case, it does seem unlikely that anyone would confuse the plastic grocery bags produced by Lorena for the five-figure leather Birkins produced by Hermès. Perhaps Lorena’s confidence in his products as permissible commentary on the luxury industry is founded, though it remains to be seen if legal action will be taken by Hermès or other luxury brands.
[1] Zachary Small, Hermès Wins $100 Million Verdict in Metabirkins Lawsuit, N.Y. Times (Feb. 8, 2023), https://www.nytimes.com/2023/02/08/arts/hermes-metabirkins-lawsuit-verdict.html [https://perma.cc/U7KT-SVCX] [https://web.archive.org/web/20230404044741/https://www.nytimes.com/2023/02/08/arts/hermes-metabirkins-lawsuit-verdict.html].
[2] Daniel Rodgers, ‘I’m Like the Pinoy Telfar’: Meet the Filipino Designer Spoofing the Birkin, Dazed Digital (Dec. 8, 2022), https://www.dazeddigital.com/fashion/article/57735/1/xylk-lorena-telfar-hermes-birkin-grocery-bag-bootleg-filipino-streetwear-yeezy [https://perma.cc/NAZ2-YG4W] [https://web.archive.org/web/20230404044934/https://www.dazeddigital.com/fashion/article/57735/1/xylk-lorena-telfar-hermes-birkin-grocery-bag-bootleg-filipino-streetwear-yeezy].
[3] Jake Silbert, Luxury Labels Shut Down This Designer’s Bootleg Bags. Now He’s Coming for Them All, Highsnobiety (Mar. 7, 2023), https://www.highsnobiety.com/p/xylk-grocery-bags-interview/ [https://perma.cc/AD44-HX3V] [https://web.archive.org/web/20230404045213/https://www.highsnobiety.com/p/xylk-grocery-bags-interview/].
[4] Id.
[5] Jake Silbert, Luxury Labels Shut Down This Designer’s Bootleg Bags. Now He’s Coming for Them All, Highsnobiety (Mar. 7, 2023), https://www.highsnobiety.com/p/xylk-grocery-bags-interview/ [https://perma.cc/AD44-HX3V] [https://web.archive.org/web/20230404045213/https://www.highsnobiety.com/p/xylk-grocery-bags-interview/].
[6] Id.
[7] Id.
[8] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021).
[9] Jessica Barnes, The Stakes in Andy Warhol Foundation v. Goldsmith, Marquette Univ. Law Sch. Fac. Blog (Oct. 4, 2022), https://law.marquette.edu/facultyblog/2022/10/the-stakes-in-andy-warhol-foundation-v-goldsmith/comment-page-1/ [https://perma.cc/RZ5P-BNUR] [http://web.archive.org/save/https://law.marquette.edu/facultyblog/2022/10/the-stakes-in-andy-warhol-foundation-v-goldsmith/comment-page-1/].
[10] Id.
[11] Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)
[12] Id.