Manhattan-based U.S. Judge Jed Rakoff delivered a significant blow to artist Mason Rothschild in the ongoing legal battle between French luxury fashion house Hermès and Rothschild’s MetaBirkin nonfungible token (NFT) collection. Following a request by Hermès, the judge has now issued a permanent injunction prohibiting the sale of MetaBirkin NFTs.
Hermès initially lodged its complaint with the U.S. District Court for the Southern District of New York in March, alleging that Rothschild’s NFT collection, which depicted furry Birkin-style handbags, infringed upon the company’s trademark. Hermès argued that Rothschild’s use of variations on their trademark misled customers into believing that the luxury brand was endorsing the MetaBirkins NFTs.
Judge Rakoff, who officially granted the injunction on June 23, expressed skepticism regarding Rothschild’s defense and questioned the artist’s continued marketing of the project. The judge contended that Rothschild’s intention was to defraud consumers by leveraging Hermes’ trademarks to enhance the appeal of his lucrative MetaBirkins NFTs. He further stated that the First Amendment did not shield Rothschild from liability for such deceptive practices.
The legal dispute initially arose in January when Hermès accused Rothschild of unauthorized usage of its Birkin trademark. The case progressed, and in February, a nine-member jury ruled in favor of Hermès, finding Rothschild guilty of trademark violation. The jury awarded Hermès $133,000 in damages.
Rothschild defended his project as an artistic expression protected by the First Amendment, drawing parallels with Andy Warhol’s legal ability to create and sell art featuring Campbell’s soup cans. Additionally, he asserted that he had not explicitly misled consumers, as disclaimers were provided clarifying that Hermès had no affiliation with the NFT collection.
However, both the judge and jury disagreed, primarily questioning Rothschild’s use of the term “Birkins.” They determined that the incorporation of Hermès’ trademarks in the name and design of the MetaBirkins NFTs, rather than just the marketing strategies employed, was intentionally misleading. As a result, the court dismissed Rothschild’s disclaimer defense.
The MetaBirkin collection, comprising 100 NFT artworks, had garnered significant attention, with reported sales surpassing $1 million. Nevertheless, with the permanent injunction now in place, Rothschild is barred from further sales of the MetaBirkins NFTs.
Hermès’ triumph in this case reaffirms the importance of protecting intellectual property rights in the increasingly popular world of nonfungible tokens. The ruling serves as a reminder that unauthorized usage of trademarks can have severe legal consequences, even in the realm of digital art.
