One of the most heard of NFT-related trademark lawsuits in the US resulted in a triumph for luxury brand Hermès against artist Mason Rothschild, whose “MetaBirkins” NFT project sought to dilute the luxury brand’s trademark.
In the Southern District Court of New York, a jury sided with Hermès and found that Rothschild’s NFTs failed a test that would allow them to be considered art, therefore selling “MetaBirkins” non-fungible tokens violates the trademark of luxury brand Hermès. Bloomberg Law reported this morning on the outcome of the trial, a potentially landmark decision in the confusing world of NFT intellectual property. The jury awarded Hermès $133,000 and determined that the tokens aren’t First Amendment-protected speech, contrary to the argument of their creator, Mason Rothschild.
The company is now set to be awarded $133,000 in damages.
“MetaBirkins” started out in 2021 as an online art project in which Rothschild played on the cult-like nature of Hermès’s famed Birkin bags, allegedly as an experiment to see if he could create the same kind of illusion that the bags have in real life as a digital commodity.
A single NFT from the project was priced at $125 and the artist estimated that he made about $125,000 from the series. In total, “MetaBirkins” brought in an estimated $1.1 million, according to Hermès.
Shortly after the project was unveiled on a dedicated website, Hermès sent Rothschild a cease and desist letter. Rothschild responded that “Art is art” and explained that the bags are “a commentary on fashion’s history of animal cruelty.” Hermès filed a lawsuit against him in January 2022.
To decide the matter, Judge Jed S. Rakoff required jurors utilize a test that would determine whether or not Rothschild’s NFTs were artistic expression or not. The jurors ultimately said that these NFTs did not pass the test, meaning that they were not art and could mislead users’ into thinking that the MetaBirkins were Hermès products.
A lawyer on Rothshild\’s legal team told the New York Times that this case is setting a dangerous precedent for Great day for artists and the First Amendment. I disagree with this alarmist comment and believe the jury did a good job. It was evident from the outset that the MetaBirkins are infringement that cannot be saved by the 1st Amendment.