{"id":23941,"date":"2023-02-21T15:16:16","date_gmt":"2023-02-21T15:16:16","guid":{"rendered":"http:\/\/www.sib.it\/?p=23941"},"modified":"2023-02-22T08:38:49","modified_gmt":"2023-02-22T08:38:49","slug":"metabirkin-gli-nft-hanno-violato-il-marchio-hermes-la-conferma-nella-sentenza-del-tribunale-di-new-york","status":"publish","type":"post","link":"https:\/\/www.sib.it\/en\/flash-news\/metabirkin-nfts-infringed-hermes-trademark-the-new-york-court-awards-damages\/","title":{"rendered":"MetaBirkin NFTs infringed Herm\u00e8s trademark: New York court awards damages"},"content":{"rendered":"

A New York court has found that Mason Rothschild\u2019s sale of NFTs named MetaBirkins depicting the iconic Birkin handbag model, as well as his use of the metabirkin.com domain name, infringed trademark rights held by Herm\u00e8s; the ruling issued on 8 February 2023 has awarded the French fashion house 133,000 USD in damages. <\/em><\/p>\n

The MetaBirkin case is among the first in which a court is asked to rule on whether NFTs can legitimately include images without the consent of the holder of rights on the image itself, and on the limits of the right to use a third party\u2019s trademark in a work of art.<\/p>\n

The United States Southern District Court of New York (\u201cthe court\u201d in the following) had already issued an order<\/a> on the case in May 2022, followed by a court decision dated 8 February 2023.<\/p>\n

Facts in the case<\/span><\/h2>\n
\"Metabirkins

MetaBirkins created by Mason Rothschild \u2013 images from looksrare.org<\/em><\/p><\/div>\n

Herm\u00e8s brought proceedings against Mason Rothschild after the artist created and sold, without the consent of Herm\u00e8s, a number of NFTs of digital images reproducing the\u00a0Birkin bag<\/a>, an iconic model for which the French maison owns trademark and trade dress rights.<\/p>\n

The artist invoked case law that has extended the protection of freedom of expression enshrined in the First amendment of the United States Constitution to \u201cexpressive\u201d works of art reproducing registered trademarks owned by third parties.<\/p>\n

The decision<\/span><\/h2>\n

The court\u2019s jury was tasked with deciding whether Mason Rothschild, in advertising and selling online the MetaBirkin NFTs, had infringed intellectual property rights held by Herm\u00e8s – causing, inter alia, the dilution of the Birkin trademark – as well as whether protection under the First amendment was applicable.<\/p>\n

In its ruling of 8 February 2023 the court held Mason Rothschild liable for trademark infringement and trademark dilution as well as for cybersquatting<\/strong> with regard to the registration and use of the metabirkin.com domain name.<\/p>\n

The court held that MetaBirkin NFTs made reference to an easily recognisable handbag model, and that buyers had perceived the NFTs as content connected with the renowned handbag sold by Herm\u00e8s<\/strong>.<\/p>\n

For the same reason the decision ruled out, based on case law, that First amendment protection was applicable, without evaluating the merit of whether the MetaBirkins possessed the expressive character which would qualify them as works of art.<\/p>\n

Material evidence and testimonies were presented during the trial proving that in representing his MetaBirkin project to investors and partners Mason Rothschild had described himself as a \u201cmarketing strategist\u201d, and the production and sale of MetaBirkin NFTs as \u201ca gold mine\u201d thanks to the exploitation of the Birkin bag\u2019s renown; according to some commentators, such elements could have weighed on the choice to consider First amendment protection inapplicable.<\/p>\n

It should also be noted that during this trial Herm\u00e8s affirmed that the MetaBirkin project had hindered its own plans to enter the NFT market.<\/p>\n

In conclusion, Mason Rothschild has been ordered to pay Herm\u00e8s 133,000 US dollars in damages<\/strong>, which the court found to be the profit made by the artist from the MetaBirkin project.<\/p>\n

However this judgement may not have put an end to the dispute: Mason Rothschild has already decided to appeal before the Supreme Court, according to news published by specialised media.<\/p>\n

Comment<\/span><\/h2>\n

The ruling of 8 February 2023 in the MetaBirkin case certainly spells good news for the fashion industry and for trademark holders in general; however, it must be noted that in this specific case<\/p>\n