U.S. District Judge Jed Rakoff rejected Mason Rothschild’s motion to dismiss in a one-page order after last week’s oral arguments over whether or not MetaBirkins NFTs infringe upon the famous Hermès Birkin luxury handbags.
Hermès, whose origins date back to as early as 1837, is a world-famous designer and producer of high-quality handbags, apparel, scarves, jewelry, fashion accessories, and home furnishings – but arguably, is known best for its famous BIRKIN handbag, an exclusive design that was first created in 1984 and first sold in the U.S. in 1986.
Back in January, Hermès sued Rothschild alleging he infringed the trademarks of its famous Birkin luxury handbag by creating and selling MetaBirkins NFTs. The NFTs represent digital images of the Birkin handbags, but covered in fur instead of leather.
The ‘Rogers’ test
Last week, oral arguments took place to determine whether or not the ongoing case against Rothschild should be dismissed.
By and through counsel and Harvard Law School Professor Rebecca Tushnet, Rothschild argues MetaBirkins falls under First Amendment protections, while Hermes says that because of how Rothschild has used the MetaBirkins name, it has created a likelihood of consumer confusion as between MetaBirkins NFTs and the Hermès brand.
Specifically, Tushner says that the MetaBirkins NFTs are protected under the Second Circuit’s 1989 Rogers v. Grimaldi test, which established the “explicitly misleads” standard. Under Rogers, the court held that users of a trademark are protected from infringement claims if their use is both (1) an artistic expression and (2) doesn’t explicitly mislead consumers.
Do these NFTs differ from ordinary consumer products?
Tushner argues that what Rothschild has done with the MetaBirkins NFTs differs from ordinary consumer products, as they are considered an “expressive work.”
During oral arguments, she stated that by not dismissing this case, this would have a “chilling effect” on artists who want to depict famous brands, but don’t have the money for a successful legal defense, citing three other trademark cases that were decided on a motion to dismiss that also applied the Rogers test.
This case will serve as one of the first instances that explores how intellectual property law is applied to NFTs.
Additionally, other trademark lawsuits, including Nike/StockX and Miramax/Quentin Tarantino are also in litigation which explore a combination of copyright and trademark law.
For more information on this case, please read Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384.
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