Judge Jed S. Rakoff of the U.S. District Court for the Southern District of New York denied the defendant’s motion to dismiss in a one-page order and said the court would render an opinion with reasons for decision.
The decision is one of the first to apply intellectual property law to NFTs, which are digital products exchanged using blockchain technology.
Hermès argued that Mason Rothschild’s use of the MetaBirkins name for a set of NFTs depicting digital images of Hermès’ luxury Birkin handbag caused consumer confusion.
The high-end retailer cited media coverage and industry conferences where people mistakenly believed MetaBirkins NFTs were tied to Hermes.
Rothschild has argued that its use of the mark is protected by the First Amendment. MetaBirkins NFTs represent Birkin handbags, but covered in fur instead of leather, which is a commentary on animal cruelty, consumerism and the value of art, according to Rothschild.
Under the Second Circuit of the Court roger test, Rothschild is protected from infringement claims because its use of the Birkin mark is artistically expressive and does not explicitly mislead consumers, he argued.
Hermès is represented by Baker & Hostetler LLP. Rothschild is represented by Rebecca Tushnet and Lex Lumina PLLC.
The case is Hermes Int’l v. Rothschild, SDNY, No. 1:22-cv-00384, 5/5/22.