But Judge Jed S. Rakoff of the US District Court for the Southern District of New York couldn’t resolve factual disputes at this stage of the case over whether artist Mason Rothschild’s MetaBirkins NFTs were artistically relevant or if they explicitly misled consumers.
Rakoff’s opinion, released Wednesday, came after he denied Rothschild’s motion to dismiss the complaint in a one-page order earlier this month.
The judge said Rogers may not apply if Rothschild was selling Birkin handbags that are “virtually wearable” in the metaverse because the MetaBirkins mark would be referring “to a non-speech commercial product.”
However, Rothschild was only selling NFTs as “code pointing to where a digital image is located and authenticating the image"—in this instance depicting Birkin handbags covered in fur instead of leather.
Using NFTs to authentic an image doesn’t “make the image a commodity without First Amendment protection any more than selling numbered copies of physical paintings would make the paintings commodities for purposes of Rogers,” the judge said.
The 1989 Rogers v. Grimaldi ruling established that artists can use a trademark as long as it is artistically relevant and doesn’t explicitly mislead consumers. Rakoff wasn’t convinced by Hermès’ argument that the test shouldn’t apply because Rothschild was using the MetaBirkins name as a source identifier rather than the title of an artwork.
“Using the title of the artwork for social media and online accounts dedicated to selling the artwork is just like the marketing and advertising approved in Rogers,” the judge said.
Rakoff acknowledged that Rogers’ artistic relevance prong set a low bar, but said Hermès made sufficient allegations that the MetaBirkins NFTs were “entirely intended” to trade off the popularity and goodwill of the Birkin mark.
Even if the NFTs were artistically relevant, Rakoff said, the court didn’t have enough information to determine whether MetaBirkins would explicitly cause consumer confusion. The court would need to apply the Polaroid factors to evaluate the likelihood of confusion, but that analysis is “fact-intensive,” Rakoff said.
Hermès is represented by Baker & Hostetler LLP. Rothschild is represented by Harvard Law School’s Rebecca Tushnet and Lex Lumina PLLC.
The case is Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384, 5/18/22.