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On May 18, 2022, SDNY U.S. District Judge Jed S. Rakoff issued a
written decision refusing to dismiss Hermes’ trademark
infringement claims against Los Angeles designer Mason Rothschild
over Rothschild’s “MetaBirkins” non-fungible
token (NFT). The lawsuit has been closely watched by trademark
lawyers and NFT minters as it represents a familiar clash between
trademark law and free expression but in the very novel context of
NFTs.
Background
Without permission from Hermes, Rothschild created digital
images of Hermes’ “Birkin” handbags and sold
these “MetaBirkins” images as NFTs. As of January 2022,
total sales for the MetaBirkins NFT series eclipsed $1.1 million.
Hermes was quick to file a complaint against Rothschild, alleging
federal causes of action for (1) trademark infringement, (2) false
designations of origin and false descriptions and representations,
(3) trademark dilution, and (4)
cybersquatting. Hermès International, et al. v
Mason Rothschild, No. 22-cv-384 (JSR) (S.D.N.Y.).
The Defense
Rothschild argued that his MetaBirkins digital images, which
depict the Hermes’ luxury handbags covered in fur, are works
of art where the physical Birkin bag serves as merely the subject
of an otherwise transformative digital expression. Commenting on
the initial cease and desist letter he received from Hermes,
Rothschild tweeted that “MetaBirkins is a playful abstraction
of an existing fashion-culture landmark. I re-interpreted the form,
materiality and name of a known-cultural touchpoint.”
Rothschild analogized to Andy Warhol’s famous artwork
depicting Campbell’s Soup cans.
The Decision
Judge Rakoff agreed that the court must determine whether the
MetaBirkins are appropriately considered artistic expressions of
the Hermes product but, in his decision to deny Rothschild’s
motion to dismiss, noted that Hermes sufficiently argued that
Rothschild’s use of the “MetaBirkins” trademark
was explicitly misleading consumers into believing the project is
authorized by, or otherwise affiliated with, Hermes. In reaching
this decision, Judge Rakoff disagreed with Rothschild’s
contention that a traditional trademark infringement analysis, and,
in particular, application of the Polaroid
factors to assess the likelihood of confusion, must be precluded in
the context of artistic works. The court effectively held that
trademark infringement can exist even as applied to artistic
expression if the artistic expression was created to explicitly
mislead consumers. In this case, the court is leaving open the
question of whether Rothschild’s use of the
“Birkin” trademark was intended as a source indicator
for purposes of trading off of the brand reputation of
Hermes’ Birkin handbags or, rather, as the title of artwork
to which First Amendment protection should apply.
Takeaways
With new business applications emerging for companies entering
the metaverse, launching NFTs, and investing in Web 3.0, the
commercial potential of this technology is growing. And as these
spaces continue to develop, they will become a critical part of
brand initiatives aimed at engaging with consumers. But the rights
of brand owners to police this space remains subject to a number of
important but unanswered questions.
The MetaBirkin case is an example of this innovation process in
action and will be an important step in defining where lines need
to be drawn to protect brands. Are digital images of physical
products transformative art or IP appropriation? Who has the right
to own what in a virtual world? Are these emerging technologies a
“natural zone of expansion” for which brands must seek
trademark protection?
The MetaBirkin case is one of several pending cases that may
help answer these questions and provide some guidance on best
practices for protection, enforcement, and fair use.
If you have any questions, please contact any of the attorneys
listed below:
Richard Assmus
For more coverage of NFTs, check out our recent podcast,
NFT Primer: What Buyers, Sellers and Issuers Need to Know, with
partners Richard Assmus and Rohith George.
Visit us at
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Mayer Brown article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
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