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Hermès Advances Trademark Claims Against MetaBirkins NFT Artist

May 6, 2022, 12:49 AM

Hermès International can proceed with a lawsuit alleging that a digital artist infringed its trademarks by selling “MetaBirkins” nonfungible tokens, a New York federal judge ruled Thursday.

Judge Jed S. Rakoff of the U.S. District Court for the Southern District of New York denied the defendant’s motion to dismiss in a one-page order and said the court would issue an opinion with the reasons for the ruling.

The ruling is one of the first to apply intellectual property law to NFTs, which are digital commodities traded using blockchain technology.

Hermès argued that Mason Rothschild’s use of the MetaBirkins name for a set of NFTs that represent digital images of Hermès’ luxury Birkin handbag caused consumer confusion.

The high-end retailer cited media coverage and industry conferences where people falsely believed that the MetaBirkins NFTs were connected with Hermès.

Rothschild argued that his use of the trademark is protected by the First Amendment. The MetaBirkins NFTs depict the Birkin handbags, but covered in fur instead of leather, which is a commentary on animal cruelty, consumerism, and the value of art, according to Rothschild.

Under the Second Circuit Court’s Rogers test, Rothschild is protected from infringement claims because his use of the Birkin trademark is artistically expressive and doesn’t explicitly mislead consumers, he argued.

Hermès is represented by Baker & Hostetler LLP. Rothschild is represented by Rebecca Tushnet and Lex Lumina PLLC.

The case is Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384, 5/5/22.

To contact the reporter on this story: Isaiah Poritz in Washington at iporitz@bloombergindustry.com

To contact the editors responsible for this story: Rob Tricchinelli at rtricchinelli@bloomberglaw.com; Carmen Castro-Pagán at ccastro-pagan@bloomberglaw.com