Hermès Wins Infringement Lawsuit: MetaBirkins NFT Permanently Banned

The Birth and Legal Battle of MetaBirkins NFT

In December 2021, American artist Mason Rothschild released a series of NFTs dubbed “MetaBirkins”, inspired by Hermès’ classic Birkin bag. Less than a month later, Hermès accused Rothschild of copyright infringement. The lawsuit was settled in February, resulting in a victory for Hermès. Recently, a federal judge in Manhattan issued an order permanently banning Rothschild from selling the contentious MetaBirkins NFTs.

（Image via THE IMPRESSION）

Rothschild – A Fraudster, Says the Judge

Manhattan Federal Judge Jed Rakoff stated in the document, “In fact, the jury found that Rothschild was a fraudster. Hermès proved that Rothschild deliberately misled consumers, making them believe that Hermès was endorsing its product.”

Compensation and The Impact of the Verdict

Hermès will receive a compensation of $133,000. The latest judgment determined that the NFT series launched by Rothschild is not protected by freedom of speech. The judge’s order last Friday also imposed permanent restrictions on Rothschild in many ways, significantly limiting the future use of MetaBirkins.

Restrictions on Marketing and Promotion

The judge’s order prohibits Rothschild and his associates from marketing, selling, and minting MetaBirkins NFTs. It also prohibits Rothschild from making future statements that might lead people to believe that MetaBirkins is associated with Hermès.

Airdropping the Order and Intellectual Property Protection

Interestingly, the judge has asked Rothschild to “airdrop” Friday’s order to existing MetaBirkins token holders. The lawsuit filed by Hermès against Rothschild highlights the challenge of how brands protect their intellectual property rights in the NFT space.

Infringement Charges and Defense

In February of this year, the court found Rothschild guilty of trademark infringement, trademark dilution, and cybersquatting. Despite Rothschild’s defense in the name of art, the jury found that Rothschild intentionally misled consumers into believing that Hermès supported the project.

（Image via The New York Times）

Post-Trial Actions and Claims

After winning the lawsuit, Hermès claimed that Rothschild “continues to promote the sale of MetaBirkins NFTs on social media and sales platforms, while seeking royalties for these sales.” Hermès has demanded that Rothschild transfer any remaining MetaBirkins NFTs he holds to a wallet designated by Hermès, and give up control of the Ethereum smart contract for the collection series.

Domain Name Transference and Freedom of Speech

However, Judge Jed Rakoff did not side with Hermès on this issue, arguing that “MetaBirkins NFT is art, at least in some respects”. He stated that the necessity of the injunction comes from a high degree of caution towards freedom of speech. Rothschild has been ordered to surrender any domain names related to the Hermès Birkin bag trademark, including “metabirkins.com”, although he can retain ownership of the MetaBirkins NFT.

Rothschild has been ordered to transfer the domain names by July 15, after which Hermès will archive these domain names.

Keywords: Hermès, Mason Rothschild, MetaBirkins, NFT, Birkin Bag, Infringement, Intellectual Property Rights, Freedom of Speech, Trademark, Cybersquatting, Ethereum Smart Contract, Domain Name