Hermès made headlines in December 2021 when an artist named Mason Rothschild revealed in an open letter that it had sent him a cease-and-desist letter, alleging that he was infringing its federally-registered trademarks by way of the sale of non-fungible tokens (“NFTs”) called MetaBirkins. In the letter to Hermès, which Rothschild posted to the MetaBirkins Instagram account, he argued that the NFTs are shielded from Hermès’s trademark claims by “the First Amendment, [which] gives me every right to create art based on my interpretations of the world around me.”
After initially positioning the NFTs as a “tribute” to Hermès’s most famous offering and “an experiment to see if [he] could create that same kind of illusion that [the Birkin bag] has in real life as a digital commodity,” Rothschild asserted that the MetaBirkins NFTs – the first of which sold on December 3 for $42,000 – act as “a commentary on fashion’s history of animal cruelty, and its current embrace of fur-free initiatives and alternative textiles.”
In light of Rothschild’s unwillingness to meet the demands set out by Hermès in its cease-and-desist (including pulling the NFTs from the market), the Birkin bag-maker filed suit against him in a New York federal court on January 14, accusing him of federal and common law trademark infringement, false designation of origin, trademark dilution, cybersquatting, and injury to business reputation and dilution under New York General Business Law, and seeking monetary damages, including the profits that he made in selling the NFTs, and injunctive relief to bar him from making further use of its trademarks.
Since Hermès first filed suit in January 2022, the case has proven to be a closely-watched matter due to its status as one of the first lawsuits to center on the intersection of trademarks and NFTs and its focus on key questions, including the extent to which “real” world trademark rights extend to the virtual world. At the same time, the case has been cited in a number of the other web3-centric lawsuits that have proliferated since, such as the one that Yuga Labs has waged against Ryder Ripps and a separate case over a Bored Ape Yacht Club NFT that landed before a court in Singapore.
Given the importance of the MetaBirkins case, we have put together a brief timeline of notable filings (complete with links to any corresponding articles) – and now, updates from the parties’ jury trial – in order to help you to stay abreast of developments …
Oct. 23, 2024: Counsel for Hermès and Rothschild engaged in oral arguments before the the U.S. Court of Appeals for the Second Circuit. A panel of judges for the Second Circuit focused on the application of the Rogers test during arguments on Wednesday, with Senior U.S. Circuit Judge Pierre Leval saying that SDNY Judge Jed Rakoff may have instructed the jury “improperly” when it comes to the Rogers test (and specifically, the role of Rothschild’s intent).
While the panel seemed to weigh in favor of Rothschild, in part, commenting on how Hermès’ win could negatively impact artists’ ability to engage in commentary, they also questioned the extent to which Rothschild may have used Hermès’ trademark-protected branding to piggyback on the well-established appeal of the company and its Birkin bag.
May 1, 2024: The court has given the go-ahead to Mason Rothschild (real name Sonny Estival) to provide permission to include the MetaBirkins works in a museum exhibition in Sweden. In an order on May 1, Judge Rakoff confirmed that Estival and a representative for the Spritmuseum submitted declarations to the court on April, with Estival declaring on penalty of perjury: “[In granting my permission to the Spritmuseum to display MetaBirkins in the museum’s upcoming exhibition on Andy Warhol and Business Art, I will require the museum to include the following statement in the text accompanying the exhibit: ‘A jury in New York unanimously found that Mr. Rothschild [Estival’s now-assumed name] had intentionally designed his NFTs to confuse the public into believing that they were in some way sponsored by Hermes, when in fact they were not.’ I also will require that the text be displayed as prominently, and in the same manner, as the other exhibit text.”
At the same time, a rep for the museum stated on penalty of perjury that “[i]f the Spritmuseum decides to use the MetaBirkins artworks with Mr. Rothschild’s permission … the museum will prominently display the text quoted” in Estival’s declaration “on the wall or on a placard next to the MetaBirkins images.”
In light of the declarations and given that Hermès has not submitted “any objections or responses to those declarations,” the court held that its previous concern – namely, that “allowing Estival to provide permission of uncertain terms to the museum to display his trademark-infringing NFTs would engender further consumer confusion as to the source of the NFTs, in violation of the Court’s permanent injunction in this case” – has been abated. Accordingly, Judge Rakoff held that “Estival may provide his requested permission to the museum in accordance with the April 25, 2024 declaration he submitted to the court.”
Apr. 18, 2024: Judge Rakoff is “willing to entertain [Rothschild’s] motion for reconsideration,” he stated in an order on April 18, in light of the fact that the MetaBirkins-maker’s counsel submitted “a new declaration from the relevant official of the Swedish museum stating that she has ‘considered the matter further since the Court hearing’ and hinting that the museum would now be willing to take steps to prevent any possible confusion regarding the source of [Rothschild’s] NFTs.”
While Judge Rakoff said that the court does not have any power over the museum, he stated that Rothschild “has the power to condition the permission to display his ‘artwork’ [in an impending exhibition] on the museum’s agreeing to certain disclaimers,” namely, ones that alert consumers that neither Rothschild nor his infringing MetaBirkins artworks have any affiliation with Hermès. In his order, the judge held that the court “would be willing to consider permitting [Rothschild’s] loan of his NFTs to the museum if both he and the museum were to agree to prominently disclose that a jury unanimously found that [Rothschild] had intentionally designed his NFTs to confuse the public into believing that they were in some way sponsored by Hermès, when in fact they were not.”
Such a disclosure “would address the court’s concern with further confusion,” according to Judge Rakoff, who said that to grant such approval, he would need to have both “a sworn declaration from [Rothschild] setting forth the precise words that he would demand the museum use if it wanted to display his NETs and a sworn declaration from [a representative of the museum] … stating not only that the museum would prominently display the words proposed by [Rothschild] but also describing the manner in which the museum would display them.”
Apr. 10, 2024: Hermès is urging an SDNY judge to reject Mason Rothschild’s bid for the court to reconsideration its rejection of his request for “clarification” of the permanent injunction previously issued in favor of Hermès. In a memo of law dated April 10, counsel for Hermès claims that Rothschild’s motion “contains impermissibly raised new legal arguments, introduces additional facts not in the record on the original motion, and does not point the Court to any evidence or controlling case law it may have overlooked as required for the narrow scope of a Rule 6.3 motion for reconsideration.”
Mar. 27, 2024: Mason Rothschild is pushing back against a New York court’s refusal to find that he would not run afoul of an injunction awarded to Hermès if he were to permit the display of his infringing MetaBirkins in an upcoming art exhibition. In a memo of law, counsel for the MetaBirkins-maker argues that SDNY Judge Jed Rakoff should reconsider a recently-issued opinion and order, in which he stated that he could not conclude, based on the evidence before the court, that Rothschild would not be violating the injunction awarded to Hermès if he gave permission for the works to be included in an upcoming exhibition on “Andy Warhol and Business Art.”
Mar. 13, 2024: A New York federal judge is not convinced that the inclusion of MetaBirkins artwork in a museum exhibition will not run afoul of the permanent injunction awarded to Hermès earlier this year. In an opinion and order dated March 13, SDNY Judge Jed Rakoff rejected Mason Rothschild’s motion seeking “clarification regarding whether the permanent injunction… in this case would prohibit [him] from providing permission to a Swedish museum to display MetaBirkins artworks in its upcoming exhibition on Andy Warhol and Business Art.” Following an evidentiary hearing, Judge Rakoff denied Rothschild’s motion, stating that he “cannot conclude, based on the evidence before [the court], that Rothschild’s requested permission comports with the injunction.”
Feb. 23, 2024: Mason Rothschild is urging a federal appeals court to overturn a lower court’s judgment in the closely-watched trademark case waged against him by Hermès. In a reply brief that he lodged with the U.S. Court of Appeals for the Second Circuit on February 23, the maker of the MetaBirkins NFTs asserts that the SDNY erred in its application of a critical test that would have afforded his Birkin-centric “artworks” protection under the First Amendment and shielded them from Hermès’ trademark claims.
Jan. 26, 2024: Rothschild is seeking clarification about whether the injunction would prohibit Rothschild from permitting a Swedish museum to display the MetaBirkins artworks in an upcoming Andy Warhol and Business Art exhibition. In a letter to SDNY Judge Jed Rakoff on January 26, counsel for Rothschild seeks guidance from the court about the bounds of the permanent injunction. According to Rothschild’s counsel, clarification from the court about the extent of the injunction is necessary, as the Spritmuseum in Stockholm, Sweden contacted Rothschild in order to display the MetaBirkins artworks in an exhibition curated by Dr. Blake Gopnik.
Dec. 29, 2023: On the heels of Rothschild seeking a stay (from the SDNY) of Hermès collection of the $133,000 in monetary damages it is owed, the court sided with Hermès. Refusing Rothschild’s motion for a stay, as first reported by TFL, the court held that Rothschild “has not provided ‘an acceptable alternative means of securing the judgment’ that would justify a stay of collection of the damages award.” Rothschild proposes placing “in escrow both the MetaBirkins [NFTs] smart contract …. And the MetaBirkins NFT artwork owned by [him] as collateral to secure the judgment in lieu of a bond.” The problem, according to the court, is that “in virtually the same breath, Rothschild concedes that he ‘is unaware of a way to place a monetary value on the MetaBirkins smart contract’ and that ‘the NFT art market is virtually non-existent at the moment.’”
“Setting aside the irony that the MetaBirkins products are the very items that Rothschild used to infringe and dilute Hermès’ trademark,” Judge Rakoff stated that there is “no conceivable basis for concluding that valueless items are ‘an acceptable alternative means of securing’ a $133,000 judgment.” In short: Rothschild has to pay up.
Nov. 20, 2023: The Second Circuit court granted art collective MSCHF, “digital design and experience studio” CTHDRL, artist Alfred Steiner, creative director Jack Butcher, and Authors Alliance leave to file an amicus curiae brief in support of Rothschild.
Jul. 31, 2023: Rothschild filed a declaration with the court confirming that he has complied with the permanent injunction order “to the best of [his] ability.”
Jul. 21, 2023: On the heels of a New York federal court denying MetaBirkins creator Mason Rothschild’s request for a judgment of law in his favor – or alternatively, a new trial in the trademark case – and granting Hermès’s petition for a permanent injunction, counsel for Rothschild filed a notice of appeal with the SDNY.
Jun. 23, 2023: In a new opinion and order, the court sided with Hermès, denying Rothschild’s request for a judgment of law in his favor or for a new trial, and granting Hermès’ petition for a permanent injunction. The court also denied Rothschild’s request to interview the jury. On the remedies front …
(1) “Given the likelihood that the continued sale and marketing of the MetaBirkins NFTs will generate confusion as to source among the public,” the court held that “Rothschild and any ‘other persons who are in active concert or participation with him’ … are enjoined from using the Birkin marks or otherwise misleading the public about the source of the MetaBirkins NFTs”;
(2) In light of the jury’s determination that Rothschild was liable for cyber-squatting, the court ordered Rothschild to transfer the www.metabirkins.com domain name and related materials to Hermès;
(3) The court declined to order Rothschild to transfer any MetaBirkins NFTs in his possession, including the smart contract, to Hermès (in order to be destroyed); and
(4) The court ordered Rothschild to disgorge any profits he derived from the MetaBirkins NFTs since the beginning of trial to the present day, which includes royalties, transfer income, or other financial benefits that he received from resales of the NFTs.
The case is Hermès International, et al. v. Mason Rothschild, 1:22-cv-00384 (SDNY).
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