In a case that should cause a stir in the NFT world, luxury goods manufacturer Hermès is suing artist Mason Rothschild over a 100-piece NFT collection that he says infringes on his iconic Birkin handbag trademark.

In December 2021, Rothschild uploaded a collection of 100 titles of NFTs to OpenSea, releasing the “MetaBirkins” collection, as he said:

“Dedication to Hermes[e]the most famous Birkin handbag, one of the “most exclusive, well-made luxury accessories”. The mysterious waiting list, intimidating price tags and extreme rarity have made this handbag a highly coveted ‘Holy Grail’ that doubles as an investment or a store of value.”

Rothschild, who also describes himself as a “digital creator” and “web cowboy”, sold 100 NFT editions for over $1,000,000, including one edition sold for 100 ETH.

Shortly thereafter, in January 2022, Hermès sent cease and desist letters to both Rothschild and OpenSea, causing the latter to withdraw the NFT collection from its market.

In response, Rothschild sold NFTs on other platforms and registered www.MetaBirkins.com disclaimer domain:

“We are not affiliated, associated, authorized, endorsed, or in any way formally associated with HERMES or any of its subsidiaries or affiliates. The official HERMES website can be found at www.Hermes.com.”

Rothschild argues that his NFTs should be considered original works of art, not unlike Andy Warhol’s silkscreen prints of Campbell’s soup cans, which fall under the First Amendment, protecting people’s rights to free speech and artistic expression.

In court documents made by the Rothschild lawyers leading the trial, they cited the 1989 case, Rogers vs. Grimaldi, which protects from liability for copyright infringement those works that are both artistic expression and do not overtly mislead consumers. Presiding Judge Rakov agreed, stating that although Rogers applied, questions indicating what is a digital good versus what is a digital work of art have not been established.

This case is likely to set an important precedent in the Web3 space, in which virtual metaverses are increasingly filled with virtual merchandise as well as art.

Lawyers add that this case will set an important precedent for defining trademarks in the Web3 space.

“[The Birkin case] will give us more guidance on what to do with NFTs.”

This was stated by Thomas Brook, a lawyer for Holland & Knight. Wall Street Magazine. He added L

“With any new technology, courts often have to apply existing law and figure out what works.”

Hermès is petitioning the court to have Rothschild cease all activity with respect to MetaBirkin NFT, including the renunciation of the MetaBirkins.com domain name and the forfeiture of damages, including profits from the sale of digital assets, which amount to more than $1,000,000.

This is not the first time that the case of intellectual property rights and NFTs has been heard by US courts. Nike is currently suing StockX, a sneaker reselling platform that integrates NFTs associated with the physical shoes it resells, for incorporating the brand’s iconic logo into its non-fungible assets.

StockX claims to use NFT as a faster way to verify ownership when sellers want to flip shoes without the burden of actually shipping them.

Hermes International vs. Rothschild should start January 30th in the Southern District of New York.

Dorian Batika

Cryptooshala Member

Dorian Batytska is a journalist interested in art and technology. He has previously contributed to CoinDesk, Decrypt, Artforum, Artnet News, The Art Newspaper and many more. He can be found on Twitter and Instagram @temp_projects where he often talks about current financial and art news, scandals and events.