nfTs & Birkins : howadiGiTalhermèsPursecouldseTnewleGalPrecedence
Trial & litigation Section Chair : KristinA . Norse – Kynes , Markman & Felman , PA adisputeovertheuseof thehermèsBirkininnfTs highlightsthelegaltension betweentrademarkrights andthefirstamendment .
In a case that has garnered attention worldwide , French luxury design house Hermès has sued artist Mason rothschild for trademark infringement of its BIrKIn trademark for his creation of the nFT line “ MetaBirkins .” For those not well-versed in the metaverse , a non-fungible token ( nFT ) is a unique digital identifier ( recorded on a blockchain ) that cannot be copied or substituted . Unlike a fungible asset — such as a dollar which can be substituted for another dollar — an nFT is an entirely unique digital asset . now , enter the Birkin , a highly-desirable and iconic handbag which typically sells for over $ 20,000.00 . rothschild believes he is entitled to protection under the First Amendment for his artistic depiction of the Birkin in his line of nFTs . Conversely , Hermès believes that rothschild ’ s use of the luxury handbag clearly violates its trademark rights .
Hermès International , et al . v Mason Rothschild , 1 which is currently pending before the Honorable Jed S . rakoff in the Southern district of new York , has provided our first insight into how courts may address novel legal trademark issues in the context of
nFTs . In his Order denying rothschild ’ s Motion to dismiss , Judge rakoff acknowledged the dispute between the parties over which test applies when evaluating the trademark infringement .
“ rothschild argues that , because the digital images of the Birkin bags that are tied to the nFTs he sells are “ art ,” the Second Circuit ’ s test in Rogers v . Grimaldi applies , and that applying the rogers test requires dismissing Hermès ’ claims on First Amendment grounds . Hermès argues that the two-prong test of Gruner + Jahr applies instead , asking whether the mark is entitled to protection and requiring the application of the Polaroid factors to assess the likelihood of confusion .” 2
In the Second Circuit ’ s seminal case Rogers v . Grimaldi , the Court held that the use of a famous trademark in connection with art does not infringe trademark rights so long as : ( 1 ) the name is “ minimally artistically relevant ,” and ( 2 ) the use does not “ explicitly mislead ” as to content , authorship , sponsorship , or endorsement . 3 Only time will tell as to whether rothschild ’ s reliance on Rogers will resurface in subsequent briefings when artistic relevance is examined .
Join the Trial & Litigation Section at hillsbar . com .
While the MetaBirkins have been removed from popular nFT marketplace OpenSeas due to the ongoing litigation , they are still available for purchase on Looksrare , ranging in prices from $ 4,000- $ 25,000 ( much less that the original listing price of $ 42,000 ). While the fate of the MetaBirkin will likely not be decided for some time , the conclusion of the litigation will provide us better insight into how the Lanham Act treats digital “ artistic expression .” At present , both Hermès and rothschild can agree with at least one sentiment , which was admitted in rothschild ’ s own briefing : “[ t ] here ’ s nothing more iconic than the Hermès Birkin Bag .” With that , I would tend to agree . n
1
Hermès International , et al . v Mason Rothschild , no . 22-cv-384 ( JSr ) ( S . d . n . Y . Jan 14 , 2022 ).
2
Memorandum Order , Hermès International , et al . v Mason Rothschild , no . 22-cv-384 ( JSr ) ( dkt . 50 ) ( S . d . n . Y . Jan 14 , 2022 ).
3
Rogers v . Grimaldi , 875 F . 2d 994 ( 2d Cir . 1989 ).
Author : Lauren V . Humphries – Buchanan Ingersoll & Rooney , PC
5 6 N O V - D E C 2 0 2 2 | H C B A L A W Y E R