Luxury fashion brand Hermès sued Mason Rothschild in January 2022 alleging that the digital images underlying the non-fungible tokens (“NFTs”) produced and sold by Rothschild depicting faux fur-covered Birkin handbags – the “MetaBirkins” – constituted trademark infringement and dilution and that Rothschild was further violating anticybersquatting laws by using a similarly infringing domain name.
According to court filings, Rothschild produced and sold one hundred MetaBirkins fetching over $1.1 million in revenues and had plans to make as many as nine hundred MetaBirkins NFTs. Throughout the lawsuit, Rothschild maintained that his use of MetaBirkins for the NFT collection was protected under the First Amendment and therefore not a violation of Hermès’ trademark rights. We first wrote about the case here.
While the court previously found that the MetaBirkins NFTs could constitute a form of artistic expression, a federal jury disagreed. The jury verdict rendered last week in favor of Hermès found Rothschild is liable for trademark infringement, trademark dilution, and for cybersquatting. The jury also found that the First Amendment did not protect Rothschild from liability and awarded Hermès a total of $133,000 in damages on its claims. A copy of the jury’s verdict is available here.
This case, at the intersection of trademark law and the First Amendment, and the jury’s verdict, are among the first of its kind, but will not be the last to consider issues of infringement in connection with NFTs.
After the verdict, Rothschild’s legal team reportedly told the Financial Times the fight is “far from over” against Hermès “a multibillion dollar luxury fashion house who says they ‘care’ about art and artists but feel they have the right to choose what art IS and who IS an artist.” But the jury’s verdict is not inconsistent with the relevant precedent analyzing the extent of First Amendment protections against the interests of a brand owner’s trademark rights under the Lanham Act. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (“First Amendment concerns do not insulate titles of artistic works from all Lanham Act claims.”).
The takeaway here is that creators should obtain appropriate legal advice before naming and promoting their NFTs and proceed with caution if their work is a creative expression based on a preexisting-work or brand.
The case is Hermes International et al v. Rothschild, Case No. 1-22-cv-00384, in the Southern District of New York.
Jodi-Ann Tillman is an attorney in the Fort Lauderdale office of Shutts & Bowen LLP, where she is a member of the Intellectual Property practice group.
Jodi concentrates her practice in the areas of copyright and trademark ...
- Case Update: Hermès Prevails in MetaBirkins Lawsuit; Jury Rejects Rothschild’s First Amendment Defense
- Intellectual Property Rights in the Metaverse: Hermès v. Rothschild and the MetaBirkins Saga
- Implementation of the Trademark Modernization Act (TMA): What Trademark Owners Need to Know
- Minerva Surgical, Inc. v. Hologic Inc.: The Supreme Court Limits the Scope of Assignor Estoppel
- United States v. Arthrex: The Supreme Court Provides the Director of the USPTO with Review Authority over Final PTAB Decisions
- Starting a Business?: Trademark Considerations for Startups
- Congress Passes CASE Act of 2020 and Law Regarding Unauthorized Streaming Services
- Romag Fasteners v. Fossil: Willful Infringement is Not Required to Recover an Award of Profits in Trademark Infringement
- Trademark Squatting or Lucrative Opportunity? Time Will Tell
- Patent and Trademark Deadlines Further Extended Due to the COVID-19 Crisis