Tiffany D. Gehrke, Partner and Chair, Trademarks and Copyrights

A jury in the Southern District of New York entered a verdict in favor of brand owners in a hotly contested and much watched case:  Hermès v. Rothschild. Brand owners and artists alike have closely been watching as the jury deliberated whether designer Mason Rothschild was liable for trademark infringement, dilution, and/or cybersquatting through his creation and use of “MetaBirkin NFTs” using digital images of fur-covered BIRKIN bags and his registration and use of the domain metabirkins.com. In what is sure to be the first of many disputes considering the scope of “real world” trademark rights, digital rights, and free speech artistic expression the jury deliberated for three days before reaching their verdict.

In this case, the jury was instructed that Hermès owned federal trademark registrations that cover both the word BIRKIN and the handbag’s distinct visual appearance, and then asked to consider three separate claims (1) whether Rothschild’s use of the MetaBirkin NFTs created a likelihood of confusion with Hermès’ BIRKIN trademarks; (2) whether Rothschild’s use of the MetaBirkin NFTs was likely to dilute the distinctiveness of Hermès’ BIRKIN trademarks; and (3) whether Rothschild engaged in cybersquatting through his registration and use of the domain metabirkins.com. Finally, the jury was instructed that, if the jury determined that Rothschild was liable for any of claims (1)-(3), then they were to determine whether was he nonetheless protected from liability because his creation and use of the MetaBirkin NFTs was an artistic expression protected by the First Amendment of the U.S. Constitution.

The jury entered judgment in favor of Hermès on each count and found that Rothschild was not protected by the First Amendment. The jury awarded $110,000 for trademark infringement and/or trademark dilution and $23,000 for cybersquatting. 

After the verdict was entered, Defendant Rothschild’s Twitter account (@MasonRothschild) tweeted numerous statements expressing his displeasure at the verdict and seems to suggest he will continue fighting the verdict.  Stay tuned.

Tiffany will moderate a panel discussing this case and other issues related to the metaverse, NFTs, and Web 3.0 in greater detail on Wednesday, February 15, with members of the Intellectual Property Law Association of Chicago.

DISCLAIMER: The information contained in this post is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its former, present, or future clients.