Hermès wins trademark infringement case against Rothschild’s “MetaBirkins” NFT

News | February 15, 2023 By:

On Wednesday, February 8, 2023, the Company Hermès won the favor of the jury and was awarded a total of $133,000 for damages for the case against Mason Rothschild and his “MetaBirkins”. The French Luxury Fashion Brand filed a lawsuit against Rothchild alleging trademark infringement, false designation of origin, false descriptions and representations, and trademark dilution under the Lanham Act. They also stated cybersquatting under the Anti-Cybersquatting Consumer Act, and state law claims for common law trademark infringement, misappropriation, and unfair competition.

According to the complaint filed by Hermès, Rothschild used the name “MetaBirkins” to mislead consumers into believing that, the Non-fungible tokens (NFTs) which depict fur-covered purses, are affiliated with the luxurious brand. This intentional resemblance, according to Hermès allowed the Rothschild to profit off of Hermès’s goodwill.

In a Complaint dated January 14, 2022, it was stated that Mason Rothschild openly revealed that his “MetaBirkins” business plan seeks to create a fortune by swapping out Hermès’ “real life” rights for “virtual rights”.

“Defendant is trying to “create the same kind of illusion that [the Birkin] has in real life as a digital commodity.” The “digital commodities” upon which Defendant is building his business, NFTs, are unique and non-fungible (i.e., non-interchangeable) units of data stored on a blockchain just as cryptocurrencies (which are fungible) are stored on a blockchain. NFTs can be created to transfer ownership of any physical thing or digital media, including an actual handbag or the image of a handbag. NFTs can also be freely bought and sold like any other commodity. As with cryptocurrencies, a highly speculative market has emerged around the trading of NFTs.”

Moreover, it was stated in the complaint that Defendant seeks to immunize himself from the legal consequences of appropriation of Hermès’ famous trademarks by proclaiming that he is solely an artist. 

“Although a digital image connected to an NFT may reflect some artistic creativity, just as a t-shirt or a greeting card may reflect some artistic creativity, the title of “artist” does not confer a license to use an equivalent to the famous BIRKIN trademark in a manner calculated to mislead consumers and undermine the ability of that mark to identify Hermès as the unique source of goods sold under the BIRKIN mark”

In an Opinion and Order dated September 30, 2022, by the United District Court of the Southern District of New York, the court denied the respondent’s motion for an interlocutory appeal on the Court’s decision to deny his motion to dismiss the claims of  Hermès against him. 

Mr. Rothschild argued that because  “the threshold for ‘artistic relevance is intended to be low,”  this issue functionally amounts to a  question of law and therefore is appropriate for interlocutory appeal.

The Court countered that “an issue that involves the application of law to alleged facts is not, at the bottom, a purely legal one. Defendant’s motion on this issue thus fails to meet the unambiguous requirements of the statute,  which allows this  Court to grant interlocutory appeal only on pure questions of law.” Thus, denying Rothschild Motion. 

The dozens of pieces of evidence through the respondent’s text messages were presented in the trial. It made the alleged violation of the infringement act stronger thus, making the verdict in favor of the Luxury Brand awarding them $110,000 for Rothschild’s profits and resale commissions and $23,000 for cybersquatting in a total of $133,000 for damages. 

A copy of the filing can be found here.