MetaBirkin NFT artist seeks new judgment after loss to Hermès

The digital artist behind the MetaBirkin nonfungible token project asked a federal judge to throw out a jury verdict that found he infringed on the “Birkin” trademark owned by luxury brand Hermès International SA.

U.S. District Judge Jed S. Rakoff gave the nine-person jury improper instructions that affected the outcome, Los Angeles-based artist Mason Rothschild argued in his Tuesday motion to overrule the jury in the Southern District of New York.

The court also excluded from the trial the testimony of art critic Blake Gopnik, an expert witness for Rothschild who would have argued that the MetaBirkin NFTs — which show digital images of Hermès’ famous fur-covered Birkin handbag — are works of art in the vein. by Andy Warhol.

Hermès sued Rothschild after the artist released the 100 NFTs in late 2021, claiming that his use of the Birkin name hurt the French luxury brand’s plans to expand into NFTs and the metaverse.

The jury found that Rothschild had infringed and diluted the Birkin trademark, and violated cybersquatting laws by operating the website metabirkins.com. They also ruled that Rothschild was not protected by the First Amendment under a standard known as the Rogers test, which balances trademark and free speech.

Rothschild argued throughout the case that the NFTs passed the test, which allows unauthorized use of a trademark as long as it is artistically relevant and does not explicitly mislead consumers.

The instructions given to the jury harmed Rothschild, he argued, by instructing them to first consider Hermès’ trademark claims before examining First Amendment defenses.

Rakoff had already ruled in a summary judgment that the MetaBirkins were artistically relevant, so the jury instructions should have focused only on whether the NFTs “explicitly mislead” consumers — the second prong of the Rogers test.

“The order of the instructions invited the jury to consider whether Rothschild should in fact be let out on a technicality,” Rothschild said. “That’s not what Rogers requires.”

Rothschild also argued in its brief that the First Amendment instruction improperly focused on whether the jury believed Rothschild intended to confuse consumers.

Investigating intent “is not the Rogers rule,” Rothschild’s brief said. “The court’s use of intent was particularly prejudicial in this case because the court had already found that the MetaBirkins artworks artistically referenced the Birkin bag.”

The Rogers test, first developed in a 1989 case before the Second Circuit, is an objective legal test that is almost always used on motions to dismiss or for summary judgment, rather than being left to a jury at the end of a trial, Rothschild noted.

Focusing on intent is subjective, and “reshaping Rogers to capture every last defendant who has a secret intent to confuse is not worth the price that will be paid going forward in terms of artistic speech that will be chilled by the prospect of extensive and destructive expensive legal cases”, the report says.

Rothschild on Tuesday also opposed Hermès’ motion for a permanent injunction that would require him to hand over the MetaBirkin domain name and social media accounts.

Harris St. Laurent & Wechsler LLP and Lex Lumina PLLC represent Rothschild. Baker & Hostetler LLP represents Hermès.

The case is Hermes International v. Rothschild, SDNY, No. 1:22-cv-00384, motion for JMOL 3/14/23.