In another decisive victory for Hermès, a Manhattan federal judge has issued a definitive injunction against artist Mason Rothschild. The decision comes after a 2022 legal battle where Hermès filed a lawsuit against Rothschild, accusing him of leveraging their esteemed Birkin brand for his financial gain.

With this latest order, filed on June 23, the court has permanently prohibited further sales of Rothschild’s controversial MetaBirkin NFTs. This decision comes after Rothschild was ordered to pay $133,000 in damages in February 2023 after losing the initial trademark case.

Rothschild vs. Hermès part two

Rothschild — who released his 100 MetaBirkins NFTs depicting fur-covered, patterned 3D handbags in December of 2021 — was accused by the French luxury house of unauthorized use of its revered Birkin trademark toward the beginning of 2022. The artist allegedly generated over a million dollars in sales from this project.

Judge Jed Rakoff, presiding over the case, asserted that Rothschild’s scheme had misled consumers into erroneously associating Hermès with the MetaBirkins NFTs, causing “significant damage” to the brand’s reputation. Rakoff dismissed Rothschild’s appeal for First Amendment protection, stating that his fraudulent use of Hermès’ trademarks fell outside the scope of artistic freedom.

Following the verdict of the initial trademark case, Hermès claimed in a March filing that Rothschild continued to promote and benefit from MetaBirkins NFTs. The luxury goods maker sought to have Rothschild surrender his remaining tokens and the proceeds he had amassed post-trial. However, Judge Rakoff elected not to force Rothschild to relinquish his tokens, citing respect for First Amendment concerns.

In his most recent order, though, Judge Rakoff imposed a stringent set of restrictions on Rothschild and his associates, barring them from marketing, selling, and minting MetaBirkins NFTs and from any conduct that could forge an erroneous link between MetaBirkins and Hermès. The artist was also ordered to relinquish control of any domain names related to the Hermès Birkin trademark by July 15, with the primary website “MetaBirkins.com” to be archived by Hermès.

“The jury, applying the Court’s very prodefendant interpretation of Rogers v. Grimaldi, determined that Hermès had proved that Rothschild, by purposely intending to confuse consumers, did not qualify for any First Amendment protection under Rogers,” Rakoff wrote in his opinion. “Thus, Rothschild’s use of Hermès’ trademarks does not qualify as First Amendment-protected speech that is exempt from anti-dilution laws.”

Although regulation of crypto and NFTs is still actively developing, this ruling highlights the emerging challenges brands, in particular, face in safeguarding intellectual property within the nascent Web3 space. The outcome could set a precedent for future cases that have to do with the fine line between artistic expression and brand trademark infringement within the digital sphere.

Editor’s note: This article was written by an nft now staff member in collaboration with OpenAI’s GPT-4.

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