Hermès Defends Trademark Against MetaBirkins NFT

On Wednesday, February 8, 2023, a jury in federal court returned a verdict in favor of Hermès International in its trademark lawsuit against the creator of the MetaBirkins NFTs. The jury found for Hermès on its claims of trademark infringement, trademark dilution, and cybersquatting related to Hermès’ BIRKIN trademark.

Hermès filed its complaint against artist Mason Rothschild on January 14, 2022, in the U.S. District Court, Southern District of New York. Rothschild created and sold MetaBirkins non-fungible tokens on the Ethereum blockchain. According to the complaint, the MetaBirkins NFTs “feature Hermès’ BIRKIN handbag design covered in fur and offered for sale under the METABIRKINS trademark.” Rothschild first began advertising and selling the MetaBirkins NFTs at Art Basel in Miami on December 2, 2021. The MetaBirkins NFTs were sold through NFT marketplaces such as OpenSea, Rarible, LooksRare, and Zora. The complaint states that “[a]s of January 6, 2022, total volume of sales for the METABIRKINS NFTs surpassed $1.1 million, with a floor price of $15,200, and the highest sale at $45,100.”

Initially, Rothschild spoke highly of Hermès and the Birkin bag in interviews. He admitted that the NFTs were created as an “experiment to see if [he] could create the same kind of illusion that the [BIRKIN handbag] has in real life as a digital commodity.” Hermès sent a cease and desist letter to Rothschild on December 16, 2021. Rothschild then posted on the MetaBirkins Instagram account that the NFTs are protected by “the First Amendment, [which] gives me every right to create art based on my interpretations of the world around me.”

Hermès argued that the use of the BIRKIN trademark and HERMÈS trademark without consent “is likely to cause confusion and mistake in the minds of the purchasing public, and in particular, tends to and does falsely create the impression that the goods sold by [Rothschild] are authorized, sponsored, or approved by Hermès when, in fact, they are not.” Hermès has not yet minted or sold its own NFTS, but the complaint argued that Rothschild’s continued advertisement and sale of the MetaBirkins NFT “ultimately preempt Hermès ability to offer products and services in virtual marketplaces that are uniquely associated with Hermès and meet Hermès’ quality standards.”

The jury awarded Hermès $133,000 in damages and found that the NFTs are not protected speech. The jury likened the MetaBirkins more to consumer products than art.

Additional Reading

Hermes wins U.S. trademark trial over ‘MetaBirkin’ NFTs, Reuters (February 8, 2023)

Hermès v. Rothschild: A Timeline of Developments in a Case Over Trademarks, NFTs, The Fashion Law (February 14, 2023)

Hermes International et al v. Rothschild (Case No. 1:22-cv-00384)

Complaint in Hermes International et al v. Rothschild

Final Judgment in Hermes International et al v. Rothschild

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