Hermès Seeks Control of MetaBirkins NFT Domain, Smart Contract

Luxury fashion brand Hermès International SA asked a Manhattan federal judge to permanently stop the artist behind the “MetaBirkin” nonfungible tokens from marketing the NFTs and to transfer the smart contract and domain name to the company.

Hermès filed the motion for a permanent injunction against the Los Angeles-based digital artist Mason Rothschild on March 3, almost four weeks after a New York jury found that the artist had infringed Hermès’ “Birkin” trademark by selling the NFTs.

Rothschild “continues to promote the sale of infringing” MetaBirkin NFTs, Hermès said in the filing. The NFTs depict digital images of the famous Birkin handbag covered entirely in colorful fur.

Hermès’ asked the court to stop Rothschild from using the MetaBirkins or similar Birkin names to promote products or NFTs. It also demanded that the artist transfer ownership of the MetaBirkins smart contract, domain name, and social media accounts to Hermès.

Rothschild’s attorney, Rhett Millsaps of Lex Lumina PLLC, said in a statement to Bloomberg Law that the “case is far from over” and that Rothschild would be responding to the motion “in due course.”

“This latest filing is a gross overreach by Hermès and an attempt to punish Mr. Rothschild because they don’t like his art, but what’s new?” Millsaps said.

Hermès pointed to Rothschild’s MetaBirkins Twitter and Instagram accounts which posted about the case after the jury returned its verdict on Feb. 8.

Throughout the case, Rothschild has argued that the NFTs he created in November 2021 are works of art no different from Andy Warhol’s silkscreen prints of Campbell’s soup cans. At trial, he argued that the MetaBirkins passed a legal standard known as the Rogers test, which balances trademark and free speech rights.

Hermès said in its filing that Rothschild caused the brand “irreparable harm” and that the jury’s damages award of $133,000 wasn’t sufficient without an injunction.

The proposed order said Rothschild should identify to Hermès any royalties or income from the NFTs since the start of the trial and transfer the money to Hermès.

Hermès said it would maintain the smart contract, archive the social media accounts, and take down the MetaBirkins webpage pending the resolution of any other post-trial motions.

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

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