MetaBirkin on Trial: The First NFT Trademark Trial Under Way

Jury selection begins today in a trademark infringement suit filed by French luxury goods company Hermès against New York-based digital artist Mason Rothschild over Rothchild’s sale of NFTs he calls MetaBirkins, which Hermès claims closely resembles its Birkin handbag. The trial comes after Judge Jed Rakoff of the U.S. District Court for the Southern District of New York denied motions for summary judgment filed by both sides, and marks the first NFT trademark case to go to trial. Given the potentially far-reaching implications, the trial is expected to draw significant attention from the IP community.

Hermès’ Birkin bags are one of the world’s most sought-after luxury items. They are a symbol of wealth, sold through exclusive shops and mysterious waitlists for tens of thousands of dollars or more. Birkin bags are known for their distinctive design, including the signature “H” hardware, and are produced using high-quality materials and meticulous craftsmanship.

Hermès argues Rothschild’s digital images of the famous handbags are confusingly similar to its Birkin bags, and that Rothschild is exploiting Hermès’ reputation and goodwill to sell its own handbags. As a result, Hermès claims that Mason Rothschild is liable for trademark infringement. Hermès will ask the jury to enjoin Rothschild from infringe its brand, require Rothschild to destroy the NFTs, and turn over his profits plus other monetary damages.

Rothschild claims his MetaBirkins are artworks, no different from Andy Warhol’s famous prints of Campbell’s soup cans, protected by the First Amendment. His legal team—consisting of renowned IP scholars from prestigious law schools—relies heavily on a 1989 case involving claims by actress Ginger Rogers that an Italian director’s movie, Ginger and Fred, in which two performers imitate her and Fred Astaire, misled the public into believing she and Astaire were connected with or approved of the film. The appellate court, in that case, rejected Rogers’ argument and endorsed protections for artistic expression so long as the expression does not confuse consumers.

The trial is expected to last several weeks, and the outcome will have significant implications for intellectual property law. But regardless of the outcome, this case serves as a reminder of the need to protect original designs and the value of trademarks in identifying the source of goods and services.

If you have a claim for trademark infringement or have been accused of infringement, contact us to learn how we can help.

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