NFT trademark stoush heads to trial in Manhattan
The trademark infringement trial between French luxury brand Hermès and digital artist Mason Rothschild is set to continue on January 30 in federal court in Manhattan.
The luxury brand accused the nonfungible token (NFT) artist of trademark infringement for promoting and selling MetaBirkins, an NFT collection said to be inspired by the group’s Birkin bags.
The trial and related lawsuit in the United States District Court for the Southern District of New York can be traced back to January 14, 2022, when Hermès filed a complaint against Mason Rothschild after the artist allegedly refused to stop selling his NFT collection.
According to court documents filed on January 23, Hermès alleges that the collection has misused the Birkin trademark and potentially confused customers into believing that the luxury brand is endorsing the project.
Meanwhile, the court documents also reveal that Rothschild believes his work is protected under the First Amendment – which allows no restrictions on free speech.
A number of intellectual property lawyers and legal experts have commented in the days leading up to the trial, noting that the case could have ramifications for the NFT industry.
Laura Lamansky, an associate at law firm Michael Best & Friedrich LLP, called the case an “instant turning point for Web3 and digital goods” in a Jan. 18 post discussing the lawsuit and its possible implications for the future of the NFT industry.
“The question remains: To what extent are real trademarks enforceable in the digital world? We will follow this case closely to determine how best to strengthen rights in the digital sphere,” she said.
“It will hopefully shed light on how artwork and the First Amendment interact with consumer goods and NFTs and how far a brand’s trademark or product rights extend in the digital space,” Lamansky added.
Related: “Wave of litigation” will hit the NFT space as copyright issues abound
Blockchain and technology lawyer Michael Kasdan has also been following the case, but he doesn’t seem to think the outcome will be too significant.
“In the end, it’s just going to be one data point for the district court case, but definitely an interesting one,” he said.
Brands and companies have begun cracking down on NFT projects that they claim violate copyright, intellectual property rights and trademarks.
On February 4, 2022, Nike filed a trademark infringement lawsuit against StockX when the online retailer allegedly created NFTs similar to Nike sneakers.
In September 2022, film director Quentin Tarantino settled a Miramax lawsuit after the founding blockchain provider, Secret Network, announced the auction of “uncut scripted scenes” from Tarantino’s 1994 film Pulp Fiction as NFTs.
