U.S. District Judge Jed Rakoff rejected Mason Rothschild’s motion to dismiss in a one-page order after last week’s oral arguments over whether or not MetaBirkins NFTs infringe upon the famous Hermès Birkin luxury handbags.
Hermès, whose origins date back to 1837, is a world-renowned designer and producer of high-quality handbags, clothing, scarves, jewellery, fashion accessories and home furnishings – but arguably best known for her famous BIRKIN handbag, an exclusive design created in 1984 and first sold in the United States in 1986.
Back in January, Hermès sued Rothschild alleging he infringed the trademarks of its famous Birkin luxury handbag by creating and selling MetaBirkins NFTs. The NFTs represent digital images of the Birkin handbags, but covered in fur instead of leather.
The “Rogers” ordeal
Last week, oral arguments were held to determine whether or not the pending case against Rothschild should be dismissed.
By and through counsel and Harvard Law School Professor Rebecca Tushnet, Rothschild argues MetaBirkins falls under First Amendment protections, while Hermes says that because of how Rothschild has used the MetaBirkins name, it has created a likelihood of consumer confusion as between MetaBirkins NFTs and the Hermès brand.
Specifically, Tushner says MetaBirkins NFTs are protected by the 1989 Second Circuit law. Rogers vs. Grimaldi test, which set the “explicitly misled” standard. Below Rogers, the court held that users of a mark are protected from infringement claims if their use is both (1) an artistic expression and (2) does not explicitly mislead consumers.
Do these NFTs differ from ordinary consumer products?
Tushner argues that what Rothschild has done with the MetaBirkins NFTs differs from ordinary consumer products, as they are considered an “expressive work.”
During oral argument, she said not dismissing the case would have a ‘chilling effect’ on artists who want to represent famous brands but don’t have the money for a successful legal defense, citing three others trademark cases which were decided on a motion to dismiss which also applied the roger test.
This case will serve as one of the first instances that explores how intellectual property law is applied to NFTs.
In addition, other trademark lawsuits, including Nike/StockX and Miramax/Quentin Tarantino, are also underway which explore a combination of copyright and trademark law.
For more information on this case, please read Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384.
