Hermès seeks control of MetaBirkin’s NFT domain, smart contract

Luxury fashion brand Hermès International SA asked a Manhattan federal judge to permanently stop the artist behind the “MetaBirkin” non-fungible tokens from marketing the NFTs and transfer the smart contract and domain name to the company.

Hermès filed the petition for a permanent injunction against Los Angeles-based digital artist Mason Rothschild on March 3, nearly four weeks after a New York jury found the artist had infringed on the Hermès ‘Birkin’ trademark by selling the NFTs.

Rothschild “continues to promote the sale of infringing” MetaBirkin NFTs, Hermès said in the filing. The NFTs show digital images of the famous Birkin bag covered entirely in colorful fur.

Hermès asked the court to stop Rothschild from using MetaBirkins or similar Birkin names to market products or NFTs. It also required the artist to transfer ownership of MetaBirkin’s smart contract, domain name and social media accounts to Hermès.

Rothschild’s attorney, Rhett Millsaps of Lex Lumina PLLC, said in a statement to Bloomberg Law that “the case is far from over” and that Rothschild will respond to the motion “in due course.”

“This latest submission is a gross betrayal by Hermès and an attempt to punish Rothschild because they don’t like his art, but what’s new?” Millsaps said.

Hermès pointed to Rothschild’s MetaBirkin Twitter and Instagram accounts that posted about the case after the jury delivered its verdict on February 8.

Throughout the case, Rothschild has maintained that the NFTs he created in November 2021 are works of art no different from Andy Warhol’s screen prints of Campbell’s soup cans. During the trial, he argued that MetaBirkins met a legal standard known as the Rogers test, which balances trademark and free speech.

Hermès said in its filing that Rothschild caused the brand “irreparable harm” and that the jury’s $133,000 damages award was insufficient without an injunction.

The proposed order said Rothschild was to identify to Hermès any royalties or earnings from the NFTs since the start of the litigation and transfer the money to Hermès.

Hermès said it would maintain the smart contract, archive the social media accounts and take down the MetaBirkins website pending the resolution of any other post-trial motions.

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, petition for permanent injunction filed 3/3/23.