NFT trademark stoush heads to trial in Manhattan

The trademark infringement trial between French luxury brand Hermès and digital artist Mason Rothschild is set to go ahead on Jan. 30 in a Manhattan federal court.

The luxury brand accused the nonfungible token (NFT) artist of trademark infringement for promoting and selling MetaBirkins, an NFT collection said to be inspired by the group’s Birkin bags.

The trial and its related lawsuit in the United States District Court for the Southern District of New York can be first traced back to Jan. 14, 2022, when Hermès first filed a complaint against Mason Rothschild after the artist allegedly refused to stop selling his NFT collection.

According to court documents filed on Jan. 23, Hermès argues the collection has improperly used the Birkin trademark and potentially confused customers into believing the luxury brand supports the project.

Meanwhile, the court docs also reveal Rothschild believes his work is protected under the First Amendment — which allows for no limits on free expression.

Getting big life experience points this week. Putting my big boy pants on — fighting for myself and everyone who believes in the freedom to create art.

— Mason Rothschild (@MasonRothschild) January 26, 2023

A number of intellectual property lawyers and legal experts have commented in the days coming up to the trial, noting the case could have implications for the NFT industry.

Laura Lamansky, an associate with law firm Michael Best & Friedrich LLP, called the case a “momentous turning point for Web3 and digital goods,” in a Jan. 18 post discussing the trial and its possible implications for the future of the NFT industry.

“The question remains: to what extent are real-world trademarks enforceable in the digital world? We’ll be watching this case closely to determine how best to bolster rights in the digital sphere,” she said.

“It will hopefully shed some light on how artwork and the First Amendment interact with consumer goods and NFTs and how far a brand’s rights in its trademarks or products extend in the digital space,” Lamansky added.

Related: ‘Wave of litigation’ to hit NFT space as copyright issues abound

Blockchain and tech lawyer Michael Kasdan has also been following the case, but he does not appear to think the result will be overly significant.

This case focuses on the line between expressive artistic reuse and infringing commercial use. Both sides have excellent counsel. In the end it’s just going to be one district court case data point but definitely an interesting one. #metabirkins #hermes #NFT #TM

— Michael Kasdan (@michaelkasdan) January 28, 2023

“In the end it’s just going to be one district court case data point but definitely an interesting one,” he said.

Brands and companies have begun to crack down against NFT projects which claim to violate copyright, intellectual property and trademarks.

On Feb. 4, 2022, Nike filed a lawsuit against StockX for trademark infringement as the online reseller allegedly created NFTs in the likeness of Nike’s sneakers.

In September 2022, film director Quentin Tarantino had to settle a Miramax lawsuit after base-layer blockchain provider Secret Network announced the auction of “uncut screenplay scenes” from Tarantino’s 1994 film Pulp Fiction as NFTs.