A Manhattan jury decided that entrepreneur Mason Rothschild infringed French luxury fashion house Hermès trademarks by creating and selling “MetaBirkins,” NFTs that linked to digital images of Hermès famed Birkin bag. This is a major victory for trademarks owners as they fight against digital artists who hope to profit from creating assets likened to real world products.
The IP Law Daily interviewed Finnegan partner Mark Sommers where he said, “This morning’s jury verdict finding NFT-creator Rothschild infringed and diluted Hermès trademark rights in its Birkin handbags when designing and selling “MetaBirkins” NFTs was the first in a line of high-profile trademark and copyright cases taking a deep dive into the intersection of artistic expression and intellectual property rights.”
He added, “In finding Rothschild’s “Metabirkins” infringing and diluting, the jury favored trademark infringement and consumer protection over alleged artistic expression. Rothschild’s argument was a familiar refrain with impulsive appeal. Rothschild claimed he was an “artist” (drawing parallels between himself and Andy Warhol), who was lawfully exercising his constitutional right to create and sell transformative art stemming from Hermès trademark rights in its Birkin bags.”
Further, “But that story gave way to evidence that Rothschild deliberately intended for his art to profit from the goodwill Hermès had developed in its Birkin trademarks, undermining his front as “artist” to reveal the work of a "swindler," as the presiding judge noted.”
When asked what this case means for the future, he said, “I am left to ponder whether today’s verdict by a Manhattan jury of nine is a precursor of what’s to come from the nine Supremes in Jack Daniels (the intersection of trade dress law and parody/humor over the Bad Spaniels pun-laden dog toy) and Goldsmith (the intersection of copyright law and transformative art over Andy Warhol’s painting of a photograph of Prince). Today, nine Manhattan citizens found Rothschild’s artistic work did not meet the smell test threshold. Looking forward to seeing if the olfactory senses of the nine Justices are as acute.”
