Hermès made headlines in December 2021 when an artist named Mason Rothschild revealed in an open letter that it had sent him a cease-and-desist letter, alleging that he was infringing its federally-registered trademarks by way of the sale of non-fungible tokens (“NFTs”) called MetaBirkins. In the letter to Hermès, which Rothschild posted to the MetaBirkins Instagram account, he argued that the NFTs are shielded from Hermès’s trademark claims by “the First Amendment, [which] gives me every right to create art based on my interpretations of the world around me.”
After initially positioning the NFTs as a “tribute” to Hermès’s most famous offering and “an experiment to see if [he] could create that same kind of illusion that [the Birkin bag] has in real life as a digital commodity,” Rothschild asserted that the MetaBirkins NFTs – the first of which sold on December 3 for $42,000 – act as “a commentary on fashion’s history of animal cruelty, and its current embrace of fur-free initiatives and alternative textiles.”
In light of Rothschild’s unwillingness to meet the demands set out by Hermès in its cease-and-desist (including pulling the NFTs from the market), the Birkin bag-maker filed suit against him in a New York federal court on January 14, accusing him of federal and common law trademark infringement, false designation of origin, trademark dilution, cybersquatting, and injury to business reputation and dilution under New York General Business Law, and seeking monetary damages, including the profits that he made in selling the NFTs, and injunctive relief to bar him from making further use of its trademarks.
Since Hermès first filed suit early this year, the case has proven to be a closely-watched matter due to its status as one of the first lawsuits to center on the intersection of trademarks and NFTs and its focus on key questions, including the extent to which “real” world trademark rights extend to the virtual world. At the same time, the case has been cited in a number of the other web3-centric lawsuits that have proliferated since, such as the one that Yuga Labs has waged against Ryder Ripps and a separate case over a Bored Ape Yacht Club NFT that landed before a court in Singapore.
Given the importance of the MetaBirkins case, we have put together a brief timeline of notable filings (complete with links to any corresponding articles) in order to help you to stay abreast of developments …
Oct. 22, 2022: Hermès files Memo in Opposition to Rothschild’s Motion for Summary Judgment.
Oct. 21, 2022: Rothschild files Memo in Opposition to Hermès’s Motion for Summary Judgment.
Oct. 8, 2022: Hermès files Memo in Support of Motion for Summary Judgment. Among other things, Hermès asserts in its motion that its claims for trademark infringement and unfair competition are “clear and undisputed, [while] Rothschild’s sole defense – that his conduct is protected by the First Amendment – is devoid of merit.”
Oct. 7, 2022: Rothschild files Memo in Support of Motion for Summary Judgment. Counsel for Rothschild argues that: (1) Rothschild’s MetaBirkins are creative expression protected by the First Amendment – i.e., that each of the MetaBirkins images individually, and the MetaBirkins project as a whole, are art; (2) the title “MetaBirkins” is artistically relevant to the artworks and to the project at issue—not least because that title indisputably describes the artworks’ content; (3) Rothschild has done nothing to explicitly mislead regarding the source of the MetaBirkins artworks, and Hermès has never been able to identify any explicitly misleading statement; and (4) Hermès has failed not only to establish explicit misleadingness, but has failed to show any significant likelihood of consumer confusion.
Oct. 5, 2022: Court refuses to certify Rothschild’s Motion to Certify Interlocutory Appeal. The judge determined that the issues at play in Rothschild’s appeal are not so “exceptional” as to warrant immediate appellate review, and denied Rothschild’s motion in full.
Sept. 28, 2022: Hermès files Notice of Motion for Summary Judgment.
Sept. 28, 2022: Rothschild files Notice of Motion for Summary Judgment.
Jun. 24, 2022: Hermès files Opposition to Rothschild’s Motion to Certify Interlocutory Appeal.
Jun. 6, 2022: Rothschild looks to appeal to 2nd Cir. In a motion to certify interlocutory appeal and memo in support, Rothschild argued that there is “substantial ground for difference of opinion regarding the court’s application of the Rogers test in its May 18 order, and also “substantial ground for difference of opinion regarding the Order’s handling of the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., which the order dismisses in a footnote.”
May 5, 2022: Court refuses to grant Rothschild’s Motion to Dismiss. In a brief order on May 5 and a subsequent memo order on May 18, Judge Jed Rakoff of the U.S. District Court for the Southern District of New York denied Mason Rothschild’s motion to dismiss. Siding with Rothschild in part, Judge Rakoff stated that Rogers is the appropriate test “at least in part” for analyzing trademark infringement. However, the court decided not to toss out the case on the basis that Hermès’s amended complaint contains sufficient factual allegations that Rothschild’s use of the trademark is not artistically relevant and that the use is explicitly misleading.
Apr. 4, 2022: Hermès files Opposition to Rothschild’s Motion to Dismiss. Hermès asserted that the court should deny Rothschild’s motion, arguing that his motion to dismiss “invites the court to make factual determinations contrary to the allegations [in Hermès’] amended complaint and change the law to immunize infringers from Lanham Act claims in virtual worlds known as the metaverse.”
Mar. 21, 2022: Rothschild files a Motion to Dismiss Hermès’s amended complaint. At the heart of Rothschild’s motion was his argument that Hermès’s trademark infringement and dilution claims should be dismissed based on precedent set out in Rogers v. Grimaldi, as Rothschild’s “fanciful depictions of fur-covered Birkin bags and his identification of his artworks as ‘MetaBirkins’” meet the “low threshold of minimal artistic relevance,” and that there is “nothing explicitly misleading about Rothschild’s depictions of Birkin bags, his use of the ‘MetaBirkins’ name as the title of his art project” and/or his use of the term on his website and social media accounts.
Mar. 2, 2022: Hermès files Amended Complaint. While Hermès set out the same causes of action and its allegations largely mirror those in its initial complaint, it bulked up the amended complaint by way of examples of alleged consumer confusion (including Instagram comments and media reports). It also provided background on NFTs and how they work.
Feb. 9, 2022: Rothschild files Motion to Dismiss. In a motion to dismiss, counsel for Rothschild doubled down on the First Amendment arguments that he cited in open letter to Hermès, claiming that the rendering of Hermès’s most famous offerings in virtual faux fur “comments on the animal cruelty inherent in Hermès’s manufacture of its ultra-expensive leather handbags,” and thus, should be shielded from the brand’s headline-making trademark claims.
Jan. 14, 2022: Hermès files Complaint against Mason Rothschild. Claiming that Rothschild “flatly refuses to stop selling the METABIRKINS NFTs,” which allegedly caused consumer confusion, the luxury goods brand filed suit against him, setting out claims of common law trademark infringement, false designation of origin, trademark dilution, cybersquatting, and injury to business reputation and dilution under New York General Business Law.