A jury in the Southern District of New York returned a verdict in favor of brand owners in a hotly contested and widely watched case:
Hermès v. Rothschild. Brand owners and artists alike watched closely as the jury considered whether designer Mason Rothschild was liable for trademark infringement, dilution and/or cybersquatting through his creation and use of “MetaBirkin NFTs” using digital images of fur-covered BIRKIN bags and his registration and use of the metabirkins.com domain. In what is sure to be the first of many disputes over the scope of “real world” trademark rights, digital rights and freedom of artistic expression, the jury deliberated for three days before reaching its verdict.
In this case, the jury was instructed that Hermès owned federal trademark registrations covering both the word BIRKIN and the bag’s distinct visual appearance, and then asked to consider three separate claims (1) whether Rothschild’s use of the MetaBirkin NFTs created a likelihood of confusion with Hermès ‘ BIRKIN trademarks; (2) whether Rothschild’s use of MetaBirkin NFTs would likely dilute the distinctive character of Hermès’ BIRKIN trademarks; and (3) whether Rothschild engaged in cybersquatting through its registration and use of the metabirkins.com domain. Finally, the jury was instructed that if the jury determined that Rothschild was liable for any of claims (1)-(3), then they would determine whether they were nevertheless protected from liability because his creation and use of the MetaBirkin NFTs was an artistic expression protected by the First Amendment to the US Constitution.
The jury ruled in favor of Hermès on each count, finding that Rothschild was not protected by the First Amendment. The jury awarded $110,000 for trademark infringement and/or dilution and $23,000 for cybersquatting.
After the verdict was entered, defendant Rothschild’s Twitter account (@MasonRothschild) tweeted a series of statements expressing his displeasure with the sentence and appearing to indicate that he will continue to fight the sentence. Pay attention.
Tiffany will moderate a panel discussing this case and other issues related to the metaverse, NFTs and Web 3.0 in greater detail on Wednesday, February 15 with members of the Intellectual Property Law Association of Chicago.
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