Following a ruling that could set a benchmark for the world of digital collectibles, a federal judge in the Southern District of New York has permanently barred Mason Rothschild and his associates from minting or selling MetaBirkin NFTs, granting the request from Hermès and supporting the unanimous decision of the jury which was made in february.
THE opinion of U.S. District Judge Jed Rakoff likely marks the end of the year-and-a-half-long legal battle between the French luxury brand and the digital artist, whose real name is Sonny Estival. Rakoff also denied Rothschild’s request for a new trial.
Back during the 2021 NFT boom, Rothschild hit a streak of 100 MetaBirkin NFTs, materially diverse and brightly colored versions from their physical counterparts that have rapidly gained traction online. The collection generated over $1 million in secondary market sales, with Rothschild receiving 7.5% royalties.
Early 2022, Hermes sues Rothschild for damages and requested that an injunction be placed on the NFTs, stating that the “MetaBirkins brand is simply ripping the famous Birkin brand from Hermès”. In response, Rothschild claimed his NFTs were a playful abstraction and critique of the world of high fashion, writing in a public statement that “The First Amendment gives me the right to make and sell artwork depicting bags Birkin”.
The New York jury disagreed with Rothschild and awarded $133,000 to Hermès in damages. This was important because, as Rakoff noted in his opinion, if the jury had found even a modest semblance of artistic expression in Rothschild’s work, he would have been entitled to the protection of the Prime Amendment. Instead, “Hermès proved that Rothschild intentionally misled consumers into believing that Hermès stood behind its products,” Rakoff wrote. “Indeed, the jury found that Rothschild was simply a crook.”
The latest decision was a response to Hermès’ request in March to stop Rothschild from promoting and profiting from its MetaBirkin NFTs, which Hermès said it continued to do after the February verdict. However, he did not grant a request to transfer the smart contract from Rothschild to Hermès, which would have allowed the brand to modify the digital file to which the MetaBirkins NFTs are linked.
Even though the NFT market has considerably cooled from the heady days of 2021, the ruling provides a solid legal footing for major brands planning to launch collectible digital assets. This shows that trademark rights in the physical world can be extended to virtual rights, said Jessica Neer McDonald, copyright and trademark specialist at Neer McD PLLC.
“It signals to businesses without virtual goods or services that they can assert their trademark rights in virtual worlds as well,” Neer McDonald told Artnet News. “This aligns with trends we see in the United States Patent and Trademark Office.”
Neither Hermès nor Rothschild responded to requests for comment.
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