Rothschild, NFT Maker of ‘MetaBirkin,’ is Held Liable in TM Infringement Trial
February 09, 2023
Written by: Andrew Alexander
A Manhattan federal jury recently ruled in favor of Paris fashion house Hermès in a trademark infringement case against designer Mason Rothschild. Rothschild had created ‘MetaBirkins’ non-fungible tokens (NFTs) that used the Hermès Birkin bag design without the company’s permission. The landmark case has been closely watched by experts in the fashion and NFT spaces, as it could have significant implications for the future of both industries.
The core question in Hermès v. Rothschild was whether Rothschild’s MetaBirkins NFTs infringed Hermès’ “Birkin” trademarks. Rothschild’s defense theory included raising the First Amendment, arguing that his works were protected artistic expressions. The nine-person federal jury rejected that theory, finding that that the NFTs did infringe Hermès’ marks and were not entitled to First Amendment protection. The jury also determined that Rothschild should pay $133,000 in total damages–$110,000 for trademark infringement and another $23,000 for cybersquatting.
The verdict speaks caution to those creating NFTs, and it is a win for fashion designers and others looking to protect their intellectual property in budding new creative markets like NFTs. It also continues interesting questions about whether the NFTs are—or are in some cases—artistic expressions. The case will likely be taken to the Second Circuit to address the First Amendment question, among other things—but for now it lights a path for companies hoping to enforce their marks against NFT makers