The trial between Hermes and NFT artist Mason Rothschild is set to continue

The trademark infringement trial between French luxury company Hermès and digital artist Mason Rothschild is scheduled to begin on January 30 in federal court in Manhattan. Both parties claim that the other infringed their respective trademarks.

Because the non-fungible token (NFT) artist was marketing and selling MetaBirkins, a series of NFTs purportedly inspired by the luxury brand’s Birkin bags, the luxury company accused the NFT artist of trademark infringement.

On January 14, 2022, Hermès filed a complaint against Mason Rothschild in the United States District Court for the Southern District of New York, alleging that the artist had refused to stop selling his NFT collection. This event marked the beginning of the trial, as well as the related lawsuit filed at the same time.

According to papers filed with the court on January 23, Hermès argues that the collection has made illegal use of the Birkin trademark and may have led customers to believe that the premium brand is associated with the initiative.

Meanwhile, the court documents reveal that Rothschild believes his work is protected under the First Amendment, which places no restrictions on free speech and prohibits censorship of any kind.

In the days before the trial, several lawyers specializing in intellectual property law and other areas of law have given their opinions and emphasized that the case may have consequences for the NFT business.

An associate at law firm Michael Best & Friedrich LLP named Laura Lamansky referred to the case as an “immediate turning point for Web3 and digital products” in an article published on January 18, discussing the lawsuit as well as its potential impact on the future of the NFT business .

The question that needs to be answered is, to what extent are trademarks from the physical world enforceable in the digital realm? “We will be following this case closely to see how we can most effectively strengthen rights in the digital world,” she added.

“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. “It will hopefully also shed light on how a brand’s rights to its trademarks or products extend in the physical space.”

Michael Kasdan, a lawyer who specializes in blockchain and technology, has been following the case as well, although he doesn’t seem to think the outcome will be very important.

“It’s just going to be one data point for the district court case in the end, but it’s certainly going to be exciting,” he added.

Companies and brands have begun enforcing stricter policies on non-fungible token (NFT) projects, which they believe violate copyright, intellectual property and trademark laws.

StockX was accused of trademark infringement on February 4, 2022, when Nike filed a lawsuit against the online retailer for the alleged creation of NFTs modeled after Nike’s shoes.

After a basic blockchain provider, Secret Network, announced the auction of “uncut script scenes” from Tarantino’s 1994 film Pulp Fiction as NFTs, film director Quentin Tarantino settled a lawsuit filed by Miramax in September 2022. The lawsuit was filed after Secret Network announced the auction.