The battle over the MetaBirkins is not over, as an appeal is in the works in the closely-watched case. 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, which bars Rothschild from continuing to market the Birkin artwork-linked non-fungible tokens (“NFTs”) and using the MetaBirkins domain, among other things, in an order in June, counsel for Rothschild is seeking intervention from the U.S. Court of Appeals for the Second Circuit.
In a notice of appeal on Friday, as first reported by TFL, Rothschild’s counsel alerted the U.S. District Court for the Southern District of New York that he is appealing to the U.S. Court of Appeals for the Second Circuit from the Opinion and Order dated June 23, in which Judge Jed Rakoff denied his motion for judgment as a matter of law or new trial, and issued an order of permanent injunction. Rothschild is also looking to appeal the final judgment that the court entered on February 14, immediately following the parties’ jury trial. In the final judgment, Judge Rakoff confirmed that a jury found that Rothschild is liable for trademark infringement, dilution, and cybersquatting, and that “the first Amendment does not bat [Rothschild’s] liability.”
Some Background: On February 8, 2023, after three days of deliberations, a federal jury returned its verdict, finding Rothschild liable for infringing and diluting Hermès International’s trademarks for its iconic Birkin handbag. The nine-person just also determined that Rothschild has unlawfully cybersquatted on the MetaBirkins.com domain name (which has since been deactivated) and awarded Hermès $133,000 in damages. Hermès had accused Rothschild of trademark infringement for promoting and selling the MetaBirkins, a collection of 100 NFTs sold for $450 each, which feature unique images of Hermès’ iconic (and expensive) Birkin bag in a range of colors and graphics. Hermès argued that consumers were likely to believe that the MetaBirkins NFTs were connected to, or affiliated with, the Hermès brand.
In response, Rothschild (unsuccessfully) argued that his NFT collection was a work of art and thus, under the test established in Rogers v. Grimaldi, his use of the BIRKIN name was protected by the First Amendment.
Chances are, Rothschild’s appeal brief will mirror many of arguments that he has made in the wake of the trial, including that court misstructured the jury instructions and the jury “mishandled” the critical First Amendment issue as a result by concluding that he had infringed Hermès’ Birkin trademark by way of his marketing and sale of the MetaBirkins NFTs (as Hermès first asserted in its complaint back in January 2022) without considering the protections afforded by the First Amendment, which is “directly contrary to what Rogers requires.” (For a dive into Rothschild arguments, you can find that here.)
The case is Hermès International, et al. v. Mason Rothschild, 1:22-cv-00384 (SDNY).
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