Hermès Lawsuit Against “MetaBirkins” NFTs Will Continue

US District Judge Jed Rakoff dismissed Mason Rothschild’s request for dismissal in a one page order after an oral debate last week on whether metabirkins NFTs violated the famous Hermes Birkin luxury handbag.

The origin of Hermes can be traced back to 1837. It is a world-famous designer and producer of high-quality handbags, clothing, scarves, jewelry, fashion accessories and household products – but it can be said that the most famous is its famous Birkin handbag, which is an exclusive design. It was first created in 1984 and sold in the United States for the first time in 1986.

As early as January this year, Hermes sued Rothschild, accusing him of infringing the trademark of its famous Birkin luxury handbag by creating and selling metabirkins NFTs. These NFTs represent a digital image of Birkin handbags, but are covered with fur instead of leather.

---

“Rogers ” Test

Last week, an oral debate was held to determine whether the ongoing case against Rothschild should be dismissed.

Through lawyer and Harvard Law School professor Rebecca Tushnet, Rothschild believes that metabirkins belongs to the protection scope of the first amendment, while Hermes said that due to how Rothschild uses the name of metabirkins, it has created the possibility of consumer confusion between metabirkins NFTs and herm è s brands.

Specifically, tushner said that metabirkins NFTs were protected by the test of the second circuit court in Rogers v. Grimaldi in 1989, which established the standard of “clear misleading”. According to Rogers, the court held that if the use of trademark users is both (1) artistic expression and (2) not clearly misleading consumers, they can be exempted from infringement claims.

Download App for Android

Download App for iOS

Are These NFTs Different From Ordinary Consumer Products?

Tushner believes that Rothschild’s approach to metabirkins NFTs is different from ordinary consumer goods because they are considered to be “expressive works”.

In the oral debate, she said that if the case was not dismissed, it would have a “chilling effect” on artists who wanted to depict well-known brands but did not have the money to successfully defend the law. She cited three other trademark cases, which were decided after the motion was rejected and also applicable to Rogers’s test.

This case will be one of the first cases to explore how intellectual property law applies to NFT. In addition, other trademark lawsuits, including Nike / stockx and Miramax / Quentin Tarantino, are also in litigation, which explore the combination of copyright and trademark law.