Hermès wins trademark lawsuit against MetaBirkin’s NFTs, sets powerful precedent for NFT creators

After several days of deliberation, the nine-person jury in the copyright infringement trial between Hèrmes and NFT artist Mason Rothschild ruled in favor of the French luxury brand on Wednesday.

The Hermès lawsuit involved the Rothschilds’ MetaBirkins NFT collection. The jury awarded $133,000 in damages to Hermès, finding that Rothschild actually profited from Hermès’ goodwill by producing NFTs based on the design house’s Birkin bags.

The jury also determined that the NFTs were not protected under the First Amendment of the US Constitution, as Rothschild’s lawyers had argued at trial.

The case sets an important precedent for NFT creators and builds the framework for intellectual property rights (IP) when it comes to digital creations. Down the line, creators like Rothschild may need to be more careful about creating NFTs with other brands’ IP to avoid future trademark lawsuits.

David Leichtman, managing partner of Leichtman Law, told CoinDesk TV on Tuesday that the case was not necessarily about Mason Rothschild’s use of the trademarked Birkin mark. Rather, it was about whether he intended to mislead consumers into believing that the MetaBirkin NFTs were associated with Hermès’ flagship product.

“The question is, was [consumers] is indeed going to be confused by MetaBirkins, regardless of whether the relevant consumer audience for Hermès products would be confused by the defendant’s work,” Leichtman said.

Hermès filed suit against Rothschild in January 2022 after the Los Angeles-based artist released an NFT collection titled MetaBirkins based on the brand’s iconic Birkin bag. In the filing, the fashion house claimed that Rothschild is “stealing the goodwill of Hermès’ famous intellectual property to create and sell its own line of products,” which could cause confusion among its consumer base.

Rothschild argued that his project was simply art that provided a larger commentary on the fashion industry, and that his artistic expression was protected by the First Amendment.

After a year of fighting over allegations of trademark infringement, Hermès vs. The Metabirkins lawsuit is set for trial on January 30.

Trying the case relied heavily on the Rogers v. Grimaldi standard, also known as the Rogers test, which examines the balance between artistic expression and trademark infringement.

During the trial, Hermès and Rothschild brought in experts on trademark law and NFTs to provide testimony that focused on consumer confusion as well as brand dilution.

In closing arguments Monday, Hermès’ lawyer Oren Warshavsky reiterated that Rothschild’s MetaBirkin NFTs not only misled consumers into thinking the two brands were related, but that the use of the Birkin name in the NFT collection weakened Hermès’ brand.

After the verdict was released, Rothschild posted a Twitter thread about the precedent the case will set for artists in the future in terms of creativity and IP.

“Take nine people off the street right now and ask them to tell you what art is, but the kicker is what they say will now become the undisputed truth,” Rothschild said in a tweet. Later in the thread, he continued: “What happened today was wrong. What happened today will continue to happen if we don’t keep fighting. This is far from over.”

UPDATE (Feb 8 21:05 UTC): Added Twitter reaction from Rothschild.