MetaBirkin NFT Judge Releases Reason for Denying Pre-Trial Wins

U.S. District Judge Jed S. Rakoff, who is overseeing a new trademark dispute between Hermès International SA and a conceptual artist who sold digital “MetaBirkin” NFTs, issued an opinion on the fourth day of the trial outlining his reasons for sending the dispute to a jury.

The Rogers test, a legal balancing test that weighs free speech and trademark rights, is the “governing framework” for the case, Rakoff wrote in his Thursday ruling. Only a jury can resolve the factual disputes in the non-fungible tokens case required for Rogers’ test evaluation, he said.

Rakoff, who sits for the Manhattan-based Southern District of New York, denied both parties’ motions for summary judgment late last year in a one-page order. He had previously told Hermès and Los Angeles-based artist Mason Rothschild that he would publish his opinion by January 24.

Hermès argues in the lawsuit that the MetaBirkin NFTs, which show digital images of Hermès’ iconic Birkin luxury handbags covered in fur, violate trademark laws by duping consumers into thinking the NFTs come from Hermès.

Rothschild has countered that the NFTs are works of art protected by the First Amendment.

The Rogers test, first defined in the 1989 decision in Rogers v. Grimaldidetermined that trademarks can be used in an expressive work without the brand’s authorization as long as it meets a minimal level of artistic relevance and does not explicitly mislead consumers.

Rakoff’s 26-page opinion determined that the Rogers test applies because the digital images showing Birkin bags covered in animated, colorful fur “suggest that they were created as a form of artistic expression.” Some of the bags have more complex designs, such as the Mona Lisa and a painting by the artist Bob Ross.

The judge had said in a statement released last May that the test probably applies, but he needed further evidence to evaluate it.

But just because the test applies doesn’t mean Rothschild’s MetaBirkins pass it, Rakoff wrote in his final opinion.

While the artist presented evidence from media interviews saying the MetaBirkin project was a “vehicle to comment on the Birkin bag’s influence on modern society”, Hermès pointed to personal text messages suggesting the artist was looking to cash in on the Birkin brand name.

“A reasonable juror could conclude that Rothschild’s claims that he saw the MetaBirkins as a largely artistic endeavor are a fabrication,” Rakoff wrote.

The parties also “strongly disagree” about confusion among consumers. Hermès commissioned a study that found a net confusion rate of 18.7% among potential NFT buyers, but Rothschild’s lawyers have objected to the study’s methods.

Hermès is represented by Baker & Hostetler LLP. Rothschild is represented by Lex Lumina PLLC and Harris St. Laurent & Wechsler LLP.

The case is Hermes International SA v. Rothschild, SDNY, No. 1:22-cv-00384, 2/2/23