On February 8, 2023, a Manhattan federal jury in the SDNY held Los Angeles designer Mason Rothschild liable for trademark infringement to high-end Paris fashion house Hermes International (“Hermes”) for his “MetaBirkins” non-fungible tokens or NFTs. The subject NFTs depicted Hermes’s pricey Birkin handbags. The suit has been closely watched by both artists and fashion designers, as owners of their respective intellectual property.
In 2022, Hermes sued Rothschild, 28, whose real name is Sonny Estival, claiming his NFTs infringe its marks protecting its Birkin handbags both in name and appearance. Hermes sells the wildly popular bags for as much as $200,000 and its representatives told the jury that Rothschild has hurt its ability to market the products in emerging online spaces.
Rothschild, who sold 100 of the NFTs in late 2021 for $450 each, claimed that his art constituted free speech and was fair use of Hermes’ intellectual property. Specifically, Rothschild asserted that as a self-styled pop artist like Andy Warhol, he has a constitutional right to produce and market purported “transformative art” even if it emulates trademarked products.
Both sides filed for summary judgment, but U.S. District Judge Jed S. Rakoff denied the motions as a result of disputed facts as to whether Rothschild created the NFTs as an artist or as an attempt to possibly shakedown Hermes for commercial gain.
The jury said Rothschild found $110,000 in damages based on the profit and resale commissions he received from selling the infringing NFTs. The jury also found that Rothschild pay $23,000 in damages for cybersquatting.
An appeal by Rothschild to the Second Circuit is expected. The case is Hermes et al. v. Rothschild, case number 1:22-cv-00384, in the U.S. District Court for the Southern District of New York.
