MetaBirkin NFT Artist Seeks New Judgment After Loss to Hermès

The digital artist behind the MetaBirkin nonfungible token project asked a federal judge to throw out a jury’s verdict finding that he infringed the “Birkin” trademark owned by luxury brand Hermès International SA.

US District Judge Jed S. Rakoff gave the nine-person jury improper instructions that prejudiced the outcome, the Los Angeles-based artist Mason Rothschild argued in his Tuesday motion for a for a judgment overruling the jury in the Southern District of New York.

The court also improperly excluded the testimony of art critic Blake Gopnik from trial, an expert witness for Rothschild who would have argued that the MetaBirkin NFTs—which depict digital images of Hermès’ famous Birkin handbag covered in fur—are works of art in the vein of Andy Warhol.

Hermès sued Rothschild after the artist released the 100 NFTs in late 2021 and claimed that his use of the Birkin name harmed the French luxury brand’s plans to expand into NFTs and the metaverse.

The jury found that Rothschild had infringed and diluted the Birkin trademark, and violated cybersquatting laws by operating the website metabirkins.com. They also determined that Rothschild wasn’t protected by the First Amendment under a standard known as the Rogers test, which balances trademark and free speech rights.

Rothschild argued throughout the case that the NFTs passed the test, which allows for the unauthorized use of a trademark as long as it’s artistically relevant and doesn’t explicitly mislead consumers.

The instructions provided to the jury prejudiced Rothschild, he argued, by directing them to first evaluate Hermès’ trademark claims before examining the First Amendment defense.

Rakoff had already determined in a summary judgment ruling that the MetaBirkins were artistically relevant, so the jury instructions should have only focused on whether the NFTs “explicitly mislead” consumers—the second prong of the Rogers test.

“The ordering of the instructions invited the jury to consider whether, in effect, Mr. Rothschild should be let off on a technicality,” Rothschild said. “That is not what Rogers requires.”

Rothschild also argued in his brief that the First Amendment instruction improperly focused on whether the jury believed that Rothschild intended to confuse consumers.

Examining intent “is not the Rogers rule,” Rothschild’s brief said. “The Court’s use of intent was especially pernicious in this case because the Court had already found that the MetaBirkins artworks artistically referenced the Birkin bag.”

The Rogers test, first developed in a 1989 case before the Second Circuit, is an objective legal test that is almost always applied at the motion to dismiss or summary judgment stage, rather than being left to a jury at the end of a trial, Rothschild noted.

Focusing on intent is subjective, and “re-fashioning Rogers to catch every last defendant harboring a secret intent to confuse is not worth the price that will be paid going forward in terms of artistic speech that will be chilled by the prospect of extensive and ruinously expensive litigation,” the brief said.

Rothschild on Tuesday also opposed Hermès’ motion for a permanent injunction that would require him to turn over the MetaBirkin domain name and social media accounts.

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

The case is Hermes International v. Rothschild, S.D.N.Y., No. 1:22-cv-00384, motion for JMOL 3/14/23.