Bored Ape NFT Trademark Ruling Sparks Clash in MetaBirkins Case

The digital artist behind the MetaBirkin nonfungible tokens and the luxury brand Hermès International SA clashed last weekend over how to interpret a recent ruling from another trademark dispute involving Bored Ape Yacht Club NFTs.

Their latest disagreement comes about three months after the first-ever trademark infringement trial over NFTs, which resulted in a New York federal jury finding Mason Rothschild liable for infringing Hermès’ marks.

In a May 12 letter to Southern District of New York Judge Jed S. Rakoff, an attorney for Rothschild argued that a California federal court incorrectly held last month that another artist was liable for infringing the Bored Ape trademark.

Hermès countered in a letter the next day that Rothschild “simply repeats previously rejected arguments” about the reach of trademark law.

Rothschild, who filed a post-verdict motion for judgment as a matter of law or a new trial, argued that his MetaBirkin NFTs, which depict the Birkin handbag covered in faux fur, are intangible works of art that aren’t within the scope of the Lanham Act, the federal trademark law.

But in Yuga Labs Inc. v. Ripps, Judge John F. Walter of the Central District of California ruled on April 21 that conceptual artist Ryder Ripps had sold copycat Bored Ape NFTs in violation of trademark law, finding that “although NFTs are virtual goods, they are, in fact, goods for the purpose of the Lanham Act.”

In his motion, Rothschild argued that a 2003 US Supreme Court ruling, Dastar Corp. v. Twentieth Century Fox Film Corp., made clear that the Lanham Act applies only to confusion about the origin of tangible goods, which doesn’t include art.

“Yuga Labs’ use of the ‘Bored Ape’ mark identifies the creators of the Bored Ape images; the NFTs convey unique ownership of the image,” Rothschild’s attorney said in the letter. “Nothing about the use of that mark conveys information about the NFT as a tangible thing, only its relation to an intangible artwork.”

In its letter, Hermès said Rothschild’s interpretation of the Supreme Court ruling would immunize “blatant appropriation” of a trademark.

Lex Lumina PLLC and Harris St. Laurent & Wechsler LLP represent Rothschild. Baker Hostetler LLP represents Hermès.

The case is Hermes International v. Rothschild, S.D.N.Y., No. 1:22-cv-00384, 5/12/23.