Andy Warhol art expert excluded from Hermès-MetaBirkin NFT sample

The digital artist behind the “MetaBirkin” non-fungible tokens cannot present testimony from an art critic who studies the work of Andy Warhol, Judge Jed S. Rakoff ruled on the first day of a new trademark lawsuit involving Hermès International SA.

That could ultimately destroy Mason Rothschild’s ability to compare his NFTs to the famous art created by Warhol, such as his screen prints of Campbell’s soup cans, Rakoff said Monday in the Southern District of New York. Rakoff gave, without detailed discussion, Hermès’ attempt to exclude the testimony of famed art critic Blake Gopnik.

The judge said Gopnik, an expert witness supporting Rothschild’s claim that his NFTs are protected artistic expression, would have been the only person to introduce the analogy between Warhol and Rothschild’s art.

MetaBirkins fell within the “Business Art” practice that Warhol pioneered, according to Gopnik’s pre-trial testimony. Gopnik authored “Warhol,” a 2020 biography of the artist.

Hermès argues that Rothschild’s NFTs infringe on the fashion house’s trademark rights to the famous Birkin bag. His use of the Birkin name to sell and advertise NFTs on website domain names and social media handles has led consumers to mistakenly believe the project is endorsed by Hermès.

The MetaBirkin NFTs, which are bought and sold using blockchain technology, link digital images of Birkin handbags covered in cartoonish, colorful fur instead of leather. Rothschild argues that the First Amendment protects his right to sell art that uses trademarks owned by corporations.

“Hermès wants you to believe only one thing: He’s a businessman or he’s an artist,” Rothschild attorney Rhett Millsaps of Lex Lumina PLLC said during opening remarks. “He is both.”

Both parties had moved to exclude evidence and testimony in the week leading up to the trial. Hermès argued in court proceedings that Gopnik should not be allowed to testify because his expertise in art history is not based on reliable data or a clear methodology.

It also said he would not be helpful to the jury because he has simply recited evidence already on the record.

Difficult NFT questions

Rakoff later chided Hermès’ lawyers for overcomplicating their explanation of what NFTs are and how they work, saying the jury seemed confused.

The testimony of Hermès’ expert witness, computer science professor Kevin Mentzer, was “far more confusing than helpful,” he said.

On the stand, Mentzer suggested that a MetaBirkin NFT is the bit of data code found on the blockchain labeled “MetaBirkin.” He noted that the digital image associated with NFT can and did change over time.

When the NFT was first created, the accompanying digital image showed what appeared to be a bag wrapped in a white cloth and the text “Future Home of MetaBirkin,” Mentzer said. The image later changed to digital renderings of the Birkin bags covered in fur.

Rakoff seemed skeptical, noting that Mentzer’s original report seemed to indicate that the MetaBirkin NFT is the digital image.

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

The case is Hermes International v. Rothschild, SDNY, No. 1:22-cv-00384, 1/30/23.