Trademarks Archives - The Fashion Law

Court Says Rogers Test Applies, But Refuses to Dismiss MetaBirkins Lawsuit

May 19, 2022 - By TFL

A New York federal court has elaborated on its refusal to toss out the lawsuit that Hermès filed against the maker of MetaBirkins non-fungible tokens (“NFTs”). On the heels of Judge Jed Rakoff of the U.S. District Court for the Southern District of New York denying Mason Rothschild’s motion to dismiss the trademark case that Hermès’ lodged against him early this year in a “bottom line” order on May 5, the court has issued a memorandum order, stating that while there may be an “artistic aspect” to the images tied to the MetaBirkins NFTs, Hermès has, nonetheless, sufficiently pleaded its case for trademark infringement, dilution, and cybersquatting.

One of the primary issues addressed by the court in its May 18 memorandum order is the applicable test for determining infringement in connection with the MetaBirkins NFTs, which consists of furry images that mirror Hermès’ famous Birkin handbag that Rothschild first released in December 2021. “Because the digital images of the Birkin bags that are tied to the NFTs he sells are ‘art,’” the court states that Rothschild argues that “the Second Circuit’s test in Rogers v. Grimaldi applies.” Beyond that, Rothschild claims (as summarized by the court) that since he “uses ‘MetaBirkins’ as the title of the artwork and not as a source identifier of his products,” his use of Hermès’s Birkin trademark is entitled to First Amendment protection under Rogers, and thus, the case should be dismissed.

Pushing back against Hermès’ claim that the Rogers test does not apply (and that the two-prong test of Gruner + Jahr v. Meredith Corp. should be used, instead), Judge Rakoff stated that Rogers is the appropriate test “at least in part” for analyzing trademark infringement. In deciding on the Rogers test, the court was unpersuaded by Hermès’ argument that Rothschild is using “MetaBirkins” in a trademark capacity (i.e., as his domain url, social media handles, etc.), thereby, distinguishing the use at hand with the use in Rogers. Hermès asserts that Rothschild is using the “MetaBirkins” mark to “brand a product line, and to attract public attention and signify source,” and that First Amendment does not protect such “unauthorized use of another’s mark as a source identifier.”

Siding with Rothschild, Judge Rakoff states that his use of “the title of the artwork for social media and online accounts dedicated to selling the artwork” is equivalent to “the marketing and advertising approved in Rogers.” Moreover, the court held that Rogers applies even though Rothschild uses the NFTs to authenticate the Birkin bag-centric images. “Because NFTs are simply code pointing to where a digital image is located and authenticating the image, using NFTs to authenticate an image and allow for tradeable subsequent resale and transfer does not make the image a commodity without First Amendment protection any more than selling numbered copies of physical paintings would make [them] commodities for the purposes of Rogers.”

(The court states in an interesting footnote that Rothschild “seems to concede” that Rogers might not apply if the NFTs were attached to a digital file of a virtually wearable Birkin, in which case the ‘MetaBirkins’ mark would refer to a non-speech commercial product.” But the court states that “Hermès’ only contention on this score is that Rothschild might branch out into virtually wearable ‘MetaBirkins,’” and since the amended complaint does not contain sufficient factual allegations that Rothschild uses, or will in the immediate future use, the mark to sell such products, the court did not consider this in connection with the motion to dismiss.)

Even against the background of the Rogers test, the court sides with Hermès in refusing to toss out the case, stating that the French luxury goods brand’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, which are the two prongs of the Rogers test.

Looking first at artistic relevance, the court cited Louis Vuitton v. Warner Bros., stating that the artistic relevant prong “ensures that the defendant intended an artistic – i.e., noncommercial-association with the plaintiff’s mark, as opposed to one in which the defendant intends to associate with the market to exploit the mark’s popularity and goodwill.” Here, Hermès sufficiently alleges that Rothschild “entirely intended to associate the ‘MetaBirkins’ mark with the popularity and goodwill of Hermès’ Birkin mark, rather than intending an artistic association.” The court points to commentary from Rothschild, himself, including where he says that the MetaBirkins were intended as a “tribute to Hermès’ most famous handbag,” as evidence of this.

As such, the court declined to resolve at this stage whether the MetaBirkins “clear the admittedly low bar of artistic relevance.”

Turning his attention to the explicit misleadingness prong, Judge Rakoff finds that Hermès satisfies its burden here. “The amended complaint contains sufficient factual allegations to support a conclusion of explicit misleadingness,” as it sets out “more than simply use or actual confusion,” and contains “sufficient allegations as to Rothschild’s behavior, not just the impact of the use on consumers, the media, and the public, but also that Rothschild himself made statements that are plausibly interpreted as explicitly misstatements and that this engendered confusion on the part of consumers.” As such, the court denies the motion to dismiss the trademark infringement claims.

The court also refuses to toss out Hermès’ trademark dilution and cybersquatting claims, as these claims “rise and fall with the First Amendment defense to the trademark infringement claims and the application of the Rogers test: that if Rogers protects Rothchild’s ‘MetaBirkins’ uses against trademark infringement claims, it even more clearly protects against trademark dilution and cybersquatting claims.” Given that Rothschild “does not contend that the amended complaint lacks sufficient factual allegations to plausibly allege trademark dilution or cybersquatting,” and given that the court “concludes that the Rogers test does not support dismissing the trademark infringe claims at the pleading stage,” the court also denies Rothschild’s motion to dismiss these claims.

Hermès first filed suit against Rothschild in a New York federal court in January, setting out claims 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. The company is seeking monetary damages, including Rothschild’s profits, and injunctive relief to bar him from making further use of its trademarks, such as by “using any reproduction, copy, counterfeit, or colorable imitation of Hermès’ federally registered trademarks to identify any goods or the rendering of any services not authorized by Hermès.”

More than merely a clash between the two parties, the case is striking, as it will potentially have significant implications for other brands and creators operating in the NFT space, which is rife with questions and uncertainty due to the relative novelty of the tech, which started garnering mainstream over the past year.

The case is Hermès International, et al. v. Mason Rothschild, 1:22-cv-00384 (SDNY).

Law Intellectual Property

Seeking Sanctions, Vans Claims that MSCHF is Violating Wavy Baby Injunction

May 13, 2022 - By TFL

Vans has asked a New York federal court to find that MSCHF is disregarding a temporary restraining order and preliminary injunction that prohibit it from continuing to offer up and/or fulfill existing orders for the allegedly infringing Wavy Baby sneakers. In a letter to Judge William Kuntz of the U.S District Court for the Eastern District of New York dated May 12, counsel for Vans alleges that despite the court’s April 29 Decision & Order, granting Vans’ motion for a temporary restraining order and preliminary injunction, MSCHF has “continued to fulfill orders for, and ship, its infringing Wavy Baby shoes in violation of the injunction.”

“Despite the unambiguous language of the injunction,” Vans alleges that it has learned from “multiple sources that MSCHF has continued to ship the infringing shoes to customers even after the injunction issued and that it has also refused to reverse and/or cancel incomplete orders for the infringing shoes.” Specifically, Vans asserts that it maintains evidence that two MSCHF customers who ordered the Wavy Baby sneakers in April “received notifications from MSCHF’s shipping carrier indicating they had received [their] order information.” Beyond that, Vans claims that it has evidence that one of its own employees who ordered the allegedly infringing shoes on April 18 “received a shipment notification that her order had been picked up by the carrier from a warehouse facility in China operated by MSCHF’s manufacturer/distributor” on May 11, almost two weeks after the injunction was issued.

“Each of the [these] violations, alone,” serves to violate the court’s order, which “clearly and unambiguously” prohibits MSCHF from “fulfill[ing] any orders for the infringing shoes” and requires it to “‘reverse and/or cancel’ any unfulfilled orders,” counsel for Vans contends. As such, they “merit a finding that MSCHF is in contempt of this court’s order,” per Vans, and also “demonstrate that MSCHF has intentionally and repeatedly flouted the authority of the court.” Beyond that, Vans asserts that it is “highly likely that more similar incidents will come to light through the briefing and hearing of Vans’ contempt motion.”

With the foregoing in mind, Vans argues that a finding of contempt and appropriate sanctions are “necessary to ensure MSCHF’s compliance with its obligations, and to protect Vans’ intellectual property rights from further irreparable harm.” Such a finding is proper here, counsel for the Southern California-based footwear brand argues, as “(1) the [court’s] order that was violated by [MSCHF] is ‘clear and unambiguous;’ (2) the proof of noncompliance is ‘clear and convincing;’ and (3) [MSCHF] has not ‘diligently attempted to comply [with the order] in a reasonable manner.’”

In addition to an order of contempt, Vans contends that the imposition of sanctions is “necessary to immediately ensure that MSCHF conforms its conduct to the court’s unambiguous instructions,” including “a coercive fine to ensure MSCHF’s future compliance with the court’s order.” On this point, Vans cites the award of “a fine of $25,000 plus a fine of $10,000 for each day the contemnor failed to comply with the court’s order” from U.S District Court for the Southern District of New York in Cherie Amie, Inc. v. Windstar Apparel, Corp. It further contends that “an award of attorneys’ fees for the cost to Vans of bringing MSCHF’s contempt to the Court’s attention should also be granted, as MSCHF had ample notice of the Injunction and nonetheless willfully disregarded its obligations.”

Judge Kuntz responded to Vans’ letter on May 12 with an order that MSCHF file a response to Vans’ contempt and sanctions request “on or before May 20.”

Vans made headlines last month when it filed suit against Brooklyn-based “art collective” MSCHF, alleging that “in spite of, or perhaps due to, [its] knowledge of Vans’ rights and the substantial value of the Vans trademarks and trade dress, MSCHF embarked on a campaign to piggy-back on Vans’ rights and the goodwill it has developed in its iconic shoes” by offering up a shoe of its own that “blatantly and unmistakably incorporates Vans’ iconic trademarks and trade dress.” In its complaint, Vans claims that by way of the Wavy Baby sneaker, MSCHF is willfully infringing its trademark and trade dress rights in the 40-year-old OLD SKOOL shoe, including the Side Stripe trademark, and also engaging in unfair competition, trademark dilution, and unfair trade practices under New York State law.

MSCHF (unsuccessfully) argued in response to Vans’ quest for a temporary restraining order and preliminary injunction that Vans is not likely to succeed on the merits of its trademark infringement (and dilution) claims because the Wavy Baby sneakers are “an artwork protected by the First Amendment” and “no reasonable consumer would be confused into thinking that Wavy Baby was produced or endorsed by Vans.” MSCHF further argued that an injunction prohibiting it from offering up the Wavy Baby shoes “would unconstitutionally restrain [its] free speech because its parody of Vans is protected First Amendment expression.”

Counsel for MSCHF has since filed a notice of appeal to the U.S. Court of Appeals for the Second Circuit in response to the district court’s grant of a temporary restraining order and preliminary injunction.

The case is Vans, Inc. v. MSCHF Product Studio, Inc., 1:22-cv-02156 (EDNY).

Tech Crypto and Blockchain

Nike Angling to Add Counterfeiting, False Advertising Claims to StockX Suit

May 11, 2022 - By TFL

Nike has asked a New York federal court to allow it to amend the complaint that it filed against StockX early this year over the resale marketplace’s allegedly infringing “Vault” NFTs, asserting that since it lodged that complaint, “additional facts transpired or were discovered that are highly relevant to [its] claims against StockX.” In addition to entering into the non-fungible token (“NFT”) market since the filing of its suit by way of a venture with its RTFKT brand, the Beaverton, Oregon-based sportswear behemoth claims that it has purchased a number of pairs of counterfeit “Nike” sneakers from the StockX platform, and all the while, StockX has altered its terms for the “Vault” NFTs, giving rise to the need for Nike to make relevant amendments to its original filing.

In the 25-page memo of law in support that it filed with the U.S. District Court for the Southern District of New York on Tuesday, counsel for Nike seeks leave to amend the complaint that it filed against StockX in February, in which it accused the fashion and footwear resale platform of trademark infringement, trademark dilution, and unfair competition. Since it lodged that complaint, Nike claims that there are “multiple facts that occurred or were discovered” that are directly related to its claims against StockX.

Primarily, Nike argues that “StockX has made a series of modifications to its representations surrounding [the] Vault NFTs” at the center of the case. For example, Nike states that after it “shined a spotlight on several problematic and deceptive terms governing the infringing Nike-branded NFTs, StockX deleted and/or replaced those terms.” StockX also allegedly “modified Vault NFT marketing that, e.g., promised owners of the infringing Nike-branded NFTs exclusive StockX benefits.” While these changes “do nothing to excuse StockX’s ongoing infringement of Nike’s marks or to resolve its past infringement and, indeed, by the time those modifications were made, StockX had already offered for sale, sold, and/or released into the stream of commerce all of the infringing Nike-branded NFTs,” Nike argues that StockX’s “revisionary conduct is, nonetheless, relevant to [its] claims,” and thus, should be included in an amended complaint.

Beyond that, Nike says that its own position has changed since it filed suit, as it has since entered the NFT market, a fact that is critical to the likelihood of confusion analysis. “Two key factors in the likelihood of confusion analysis are ‘proximity of the products and their competitiveness with one another’ and evidence that the senior user may ‘bridge the gap’ by developing a product for sale in the market of the alleged infringer’s product,” Nike asserts. “Sure enough, after Nike’s drop of these NFTs, additional actual confusion between the parties’ occurred because of StockX’s infringing Nike-branded NFTs.”

Finally, Nike proposes supplementing its pleadings with additional allegations – and two addition causes of action – centering on its alleged purchase of “four confirmed pairs of counterfeit ‘Nike’ shoes” from the StockX platform. Despite “StockX’s numerous guarantees of authenticity,” and its argument that each of the Vault NFTs functions as “a ‘claim ticket’ to a pair of Nike shoes that StockX authenticated using its ‘proprietary, multi-step authentication process,’” Nike claims that it purchased the counterfeit sneakers “within a two-month period on StockX’s platform.”

“At least one pair of those counterfeit shoes are the same style as one of the infringing Nike-branded Vault NFTs,” Nike asserts.

In addition to seeking to include factual allegations about how StockX is “actively and directly selling counterfeit goods on its platform,” Nike says that it is looking to add counterfeiting and false advertising causes of action to its original five causes of action. Nike claims that it has a claim for false advertising in light of StockX’s practice of “guaranteeing [its] sales as ‘100% Verified Authentic’ based on its ‘proprietary’ authentication process when they are not,” and give that “those statements are material to [consumers’] purchasing decisions.”

As support for proposed inclusion of counterfeiting and false advertising claims, Nike asserts that “a court in this District recently denied a Rule 12(b)(6) motion to dismiss nearly identical causes of action for counterfeiting and false advertising.” The case that Nike is referencing is Chanel v. The RealReal (“TRR”), in which the court held that “Chanel has adequately averred that its own investigation revealed that TRR marketed and sold counterfeit Chanel products, and Chanel has also alleged that TRR’s own customers have complained about the receipt of counterfeit merchandise.”

In the case at hand, just as Chanel asserts in its case against TRR, Nike argues that it sets out “plausible claims for counterfeiting and false advertising because the proposed [amended complaint] sufficiently alleges that StockX has been and is currently dealing in counterfeit Nike goods, which renders false and/or misleading StockX’s ‘100% Verified Authentic’ claims and its claims about the ‘proprietary multi-step verification process’ it employs to authenticate goods.”

Nike also contends that it “sufficiently alleges that StockX is knowingly deceiving consumers with these false and/or misleading statements about the authenticity of the Nike goods for sale on its platform, continuing to engage in such improper and unlawful business practices to attract consumers to its platform and induce consumers to purchase supposedly genuine Nike goods and purchase and trade the infringing Nike-branded Vault NFTs.” And still yet, Nike alleges that “the continued sale of counterfeit Nike goods on StockX’s platform and StockX’s false and/or misleading claims about its authentication process has caused and is causing Nike injury as a result of, inter alia, harm to reputation, diverted sales, consumer confusion, dilution, and tarnishment of its valuable trademarks.”

For the foregoing reasons, Nike requests the Court grant it leave to file a first amended complaint.

In a statement in response to Nike’s filing, a spokesman for StockX stated on Wednesday, “We take customer protection extremely seriously, and we’ve invested millions to fight the proliferation of counterfeit products that virtually every global marketplace faces today. Nike’s latest filing is not only baseless but also is curious given that their own brand protection team has communicated confidence in our authentication program, and that hundreds of Nike employees – including current senior executives – use StockX to buy and sell products. This latest tactic amounts to nothing more than a panicked and desperate attempt to resuscitate its losing legal case against our innovative Vault NFT program that revolutionizes the way that consumers can buy, store, and sell collectibles safely, efficiently, and sustainably. Nike’s challenge has no merit and clearly demonstrates their lack of understanding of the modern Marketplace.”

The case is Nike, Inc. v. StockX LLC, 1:22-cv-00983 (SDNY).

Law Intellectual Property

Thom Browne Pushes For Cancellation of adidas 3-Stripe Trademark Registration

May 9, 2022 - By TFL

A stripes-centric legal battle between adidas and Thom Browne is heating up. On the heels of a New York federal court refusing to toss out the trademark case that adidas filed against it last year, Thom Browne has filed its answer, complete with 18 affirmative defenses – and a counterclaim aimed at getting one of adidas’ 3-stripe trademark registrations canceled. In addition to denying the bulk of the allegations that adidas has made against it in its complaint, Thom Browne sets out an array of affirmative defenses, arguing that, among other things, it should be shielded from liability because adidas failed to take action against it – in a timely manner – over its use of a 4-stripe pattern, which has appeared on Thom Browne wares since 2009.

In furtherance of its Laches, Acquiescence, and Estoppel defense, Thom Browne claims that adidas has been aware of its use of the 4-stripe mark since 2007 when “adidas complained about Browne’s use of three horizontal parallel bands on its clothing,” prompting it to adopt a logo that consists of “four horizontal parallel bands.” From 2009 through 2018, which is when adidas first initiated an opposition proceeding over one of Browne’s 4-stripe marks in the European Union, Thom Browne claims that “adidas did not complain about [its] use of four horizontal parallel bands on clothing.”

The New York-based fashion brand also claims that “throughout this period of time … there have been no instances of actual confusion between [its] use of four horizontal parallel bands, and adidas’ use of three stripes.”

In connection with other affirmative defenses, the brand asserts that it and adidas operate in “entirely separate markets, at vastly different price points, and are not competitors,” thereby, diminishing the likelihood of confusion. Beyond that, Browne argues that it despite adidas’ allegations to the contrary, it has “not encroached into adidas’ market,” and that “any changes to [its] product line over the years” – i.e., its expansion from high fashion into sportswear/activewear – “has been natural and anticipated.”

Additionally (and setting the stage for its cancellation-focused affirmative defense), Browne argues that adidas lacks robust rights in the 3-stripe motif, as the German giant’s use of stripes on clothing and footwear “has not been exclusive.” In fact, Browne asserts that “numerous third parties use stripes, in multiple variations and iterations, on clothing and footwear,” and claims that adidas has “failed to police the market, and, as a result, has allowed third parties to use stripes on clothing and footwear,” thereby, removing adidas’ ability to make its trademark claims in this case. (The failure-to-enforce claim is an interesting one given that later on in its filing, Browne specifically points to adidas’ “notoriety as an overzealous enforcer of its actual and perceived rights in its ‘Three- Stripe Mark.’”)

With the foregoing defenses (and others) in mind, counsel for Thom Browne is seeking “a judgment dismissing the complaint, for costs and disbursements, an award of attorneys’ fees, and such other and further relief as to the Court seems proper.”

Thom Browne’s Cancellation Counterclaim

Turning its attention to its counterclaim, Thom Browne asserts that adidas’ “Three-Quadrilaterals Design” mark (Registration No. 4,910,643) is “merely ornamental and/or aesthetically functional” and “has not acquired secondary meaning.” Pushing for the court to cancel the registration, which extends to “articles made of leather and imitation leather,” clothing, and “athletic sporting goods,” Thom Browne argues that during the registration process, adidas did not “specifically establish that the design is perceived as an ‘indicia of source,’” and thus, the U.S. Patent and Trademark Office (“USPTO”) should never have registered the mark back in 2016.

In responding to a March 2015 Office Action from the USPTO, which preliminarily refused to register the mark on the basis that it was “merely a decorative or ornamental feature of the goods,” Thom Browne claims that “nearly all” of the product photographs that adidas provided to the USPTO show the Three-Quadrilaterals Design used alongside the “adidas” work mark and/or its “Badge of Sport” mark, “if they show the Three-Quadrilateral Designs at all.” In short: Thom Browne claims that adidas did not establish that the Three-Quadrilaterals Design, by itself, serves as an indicator of source for consumers.

“The Three-Quadrilaterals Design is merely ornamental and/or aesthetically functional as applied to the goods” cited in the registration, Browne alleges, and in lieu of a showing of secondary meaning, “the mark is not likely to be perceived by the consuming public as an identification of the source of the goods.”

Thom Browne states that it “believes it is likely to be damaged by maintenance of adidas AG’s Registration No. 4,910,643 because adidas is asserting that registration against Thom Browne in this case in an effort to disrupt Thom Browne’s business.” As a result, Browne is looking to have “the complaint and each and every purported claim for relief be dismissed with prejudice,” and judgment entered in Thom Browne’s favor on its counterclaim, including an order from the court cancelling the adidas trademark registration at issue.

In the complaint that it filed in June 2021, in which it sets out claims of trademark infringement, unfair competition, and dilution, adidas argues that in furtherance of Thom Browne’s “recent encroach[ment] into direct competition with adidas by offering sportswear and athletic-styled footwear that bear confusingly similar imitations” of adidas’s three-stripe mark, which adidas asserts that it has “extensively and continuously has used and promoted … in connection with apparel and footwear … for over half a century.”

The case is adidas America, Inc., et al., v. Thom Browne, Inc., 1:21-cv-05615 (SDNY).

Law Intellectual Property

MetaBirkins Creator Cannot Escape Hermès Trademark Suit, Judge Says

May 6, 2022 - By TFL

The latest development in the Hermès v. Rothschild came this week – and it is a win for the French luxury goods brand. In an order dated May 5, Judge Jed Rakoff of the U.S. District Court for the Southern District of New York denied Mason Rothschild’s motion to dismiss Hermès’ trademark suit that centers on Rothschild’s MetaBirkins NFTs. In arguments before the court (via phone) on Wednesday, counsel for Hermès argued that despite his claims to the contrary, Rothschild has used the MetaBirkins name as a trademark and is not commenting on “anything” with the NFTs and instead, is merely trading off of the Hermès brand to sell (virtual) products of his own. Meanwhile, counsel for Rothschild doubled-down in its claims that emphasize the difference between Hermès’ offerings and Rothschild’s NFTs, the latter of which are “picture[s] of fanciful, fur-covered handbag[s]” – not handbags, and Rothschild’s alleged attempt to comment on/challenge the meaning of luxury.

The order comes on the heels of counsel for Rothschild filing a motion to dismiss, in which they argued that Hermès’ trademark infringement and dilution claims should be dismissed based on precedent set out in Rogers v. Grimaldi, which essentially establishes that the use of a trademark in an artistic work is actionable only if the use of the mark has no artistic relevance to the underlying work, or explicitly misleads as to the source or content of the work. Rothschild’s counsel asserted that his “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.

Rothschild’s team further claimed that Hermès is attempting “to avoid Rogers by alleging that Rothschild’s identification of his art project by the MetaBirkins name and his use of that name for social media and online accounts dedicated to the art project constitutes ‘trademark use’” of its famous “Birkin” trademark. Taking issue with that approach, Rothschild’s counsel argued that there is no “trademark use” exclusion from Rogers, and that “the doctrine applies to claims against the name or content of expressive works,” and that “every single one” of Rothschild’s allegedly infringing uses that Hermès identifies “refers to the MetaBirkins digital artworks.”

“It bears repeating,” Rothschild argued, “that Hermès does not and cannot allege any uses [of its marks] unrelated to the artworks,” and in fact, “alleges only that Rothschild markets his art by name and uses the obvious modern authentication and promotional tools to do so.”

Hermès responded with a memo in opposition, asserting last month that Rothschild’s motion to dismiss should be tossed out, as it has sufficiently pleaded claims for trademark infringement, trademark dilution, and cybersquatting. Speaking specifically to its trademark infringement claim, Hermès primarily alleged that that Rothschild is using the MetaBirkins name as an indicator of source (i.e., as a trademark), arguing that the use of a trademark “to identify a product line and to promote a business enterprise is the essence of trademark use.” And in a nod to Rothschild’s use of the MetaBirkins name as the domain for his website and as the handle for across various social media channels, Hermès pointed to the U.S. Court of Appeals for the Second Circuit’s long recognition that “use of a mark as the address, or name, of a website,” for examples, “is a trademark use.”

Hermès first filed suit against Rothschild in a New York federal court in January, setting out claims 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. The company is seeking monetary damages, including Rothschild’s profits, and injunctive relief to bar him from making further use of its trademarks, such as by “using any reproduction, copy, counterfeit, or colorable imitation of Hermès’ federally registered trademarks to identify any goods or the rendering of any services not authorized by Hermès.”

More than merely a clash between the two parties, the case is striking, as it will potentially have significant implications for other brands and creators operating in the NFT space, which is rife with questions and uncertainty due to the relative novelty of the tech, which started garnering mainstream over the past year.

Judge Rakoff says that he will issue a full opinion in “due course.”

The case is Hermès International, et al. v. Mason Rothschild, 1:22-cv-00384 (SDNY).