NFTs, Trademarks, and the First Amendment: A Primer by Hermès International v. Rothschild – Trademarks – United States

NFTs, Trademarks, and the First Amendment: A Primer by Hermès International v. Rothschild – Trademarks – United States

Today, jurors in New York City
Hermès International v. Rothschild The court’s conclusions have precedent impact on artists caught between artistic expression protected by the First Amendment and trademark rights enforced under the Lanham Act. There is a possibility.

Specifically, the jury will be asking whether the NFT representing “Metabarkin” created by defendant Mason Rothschild is considered a protected artistic expression under the First Amendment, or whether Rothschild’s tasked with determining whether Hermès’ use of the BIRKIN and HERMÈS trademarks and trade dress crosses the line. violation of the Lanham Act.

Here’s what you need to know about the background to the incident.

To be exact teeth NFT?

A non-fungible token (NFT) is a cryptographic token that represents a unique unit of data stored on a digital ledger called a blockchain. In the context of digital art collections, NFTs act as digital receipts for purchases of related items. i.e. digital art. For digital art NFTs, the art itself is typically not stored within the NFT’s underlying code, but may consist of .jpegs or other digital files stored elsewhere online (A distributed file system or InterPlanetary File System, or a decentralized blockchain data storage protocol such as Arweave).The code for the NFT is usually point to That separately stored asset, via a Uniform Resource Identifier (URI), may contain other metadata in the NFT itself that references the art asset or other aspects of the NFT project. assets.

Creation and sale of MetaBirkins NFTs by Rothschild

Around December 2021, Rothschild created “MetaBirkins,” a collection of digital images depicting Birkin handbags covered in faux fur. Rothschild then used the NFT to sell MetaBirkin. The NFTs he sells on 4 different his NFT platforms and while the value of cryptocurrencies continues to fluctuate, some of his NFTs in this collection are comparable to physical Birkin handbags in the real world. It is sold at a price that

There is no dispute that Rothschild uses the Hermès trademark. The BIRKIN trademark is used as the name of the NFT token itself, the source code used to create the NFT, the slogan “NOT YOUR MOTHER’S BIRKIN” used to promote digital art, and the domain name of the official MetaBirkins website (, and on social media. Furthermore, the description of Rothschild’s first project on the MetaBirkins website and his OpenSea marketplace (in each case, as set forth in the Hermès complaint) states that MetaBirkins is “Hermes’ most famous handbag.” He openly admitted that it was a tribute to


(Original description from MetaBirkins website, since deleted. Source: Complaint, Figure 5, Civil Case No. 22-CV-00384)


(Original description of OpenSea’s MetaBirkins, since deleted. Source: Complaint, Figure 10, Civil Case No. 22-CV-00384)

Rothschild claims his use is a creative expression, while MetaBirkins claims it is an artistic commentary on the fur-free movement in fashion and consumerism in general within the digital space. A disclaimer is posted on MetaBirkins’ website stating that the project is “not affiliated with, associated with, endorsed, endorsed, or in any way officially associated with MetaBirkins. [sic] HERMES, or its subsidiaries or affiliates,” with a link to the official Hermès website.



Hermès files lawsuit against Rothschild

On January 14, 2022, Hermès filed a subsequently amended complaint against Rothschild alleging that: above all, BIRKIN and HERMÈS trademarks to identify, promote and profit from the sale of NFTs.The Rothschilds claim they are entitled to First Amendment protection as stated in influential cases Rogers vs Grimaldi, 875 F.2d 994 (2d Cir. 1989) (argued by Pryor Cashman and won).of Rogers Because this case is First Amendment protected artistic expression, we developed a test to determine when use of a trademark is exempt from an infringement claim. On the other hand, Hermès, even if Metabirkin passed, Rogers In testing, Rothschild’s use of the Hermès trademark was clearly misleading to consumers, as explained by the Ninth Circuit. Gordon v. Drape Creative Inc.909 F.3d 257 (9th Cir. 2018).

An explicitly misleading use in the context of NFTs was recently made in the United States District Court for the Central District of California. Yuga Labs, Inc. v. Ripps, Case No. CV 22-4355-JFW(JEMx), 2022 WL 18024480 (CD Cal. Jan. 16, 2022), awaiting decision on appeal to the Ninth Circuit. The lawsuit involves the plaintiff, the “Bored Ape Yacht Club,” one of his most popular and profitable NFT collections created by his Yuga Labs. In Spring 2022, visual and conceptual defendant Ryder Ripps, his artist, is alleged (along with one or more co-defendants) to create another of his NFT projects. In his original online storage location he is used by Yuga Labs. Yuga said that in order to market and promote this “mirror” NFT project, the defendant will include Yuga’s mark (identified with the acronym “BAYC”), including the same his NFT marketplace where his own collection of Yuga is sold. ), including the logo of

In December of this year, the district court ruled that “a collection of NFTs that refer to the same online digital images as the BAYC collection” does not, in itself, constitute an “expressive work of art” and that the use of Yuga’s mark does not add to this collection. On a related note, it was clearly misleading to consumers. Lips2022 WL 18024480 at *5. Further, the court held that the disclaimer on Ripps’ website that it had nothing to do with Yuga Labs was misleading for Ripps’ use of Yuga Labs’ trademarks. I judged that it shows that I am aware of it. Ditto.

The facts of the MetaBirkins case may be distinguishable from the Ripps project in important ways. This includes the results of the Rothschilds creating their own visual assets.Up the stakes, MetaBirkins and Lips Litigation runs on two distinct tracks, both of which are considered important in the development of legal precedents applicable to intellectual property in the creative industries, but neither is subject to following the legal precedent established by the other. it won’t work.

Why is this dispute different from other trademark infringement lawsuits? What does this ruling mean for brands and artists?

This is not a standard trademark infringement case, but a first impression case due to the media in which the trademark is used. The jury’s decision in this case should help define the blurred line between protectable artistic expression and commercial products that may cause consumer confusion in the context of NFT projects.

But the problems underlying that analysis are complex. An expressive artistic statement of the NFT Project, including the use of established marks, RogersIf so, under what circumstances? Is a proper distinction made between the NFT itself and the associated visual artwork so that one is determined to be protected speech and the other is determined to be infringing? Art associated with the NFT Even if the Work, or the NFT Project as a whole, is considered an artistic expression, Rogers Are there situations where that test does not apply? These questions are not easy to parse in the MetaBirkins case. This is necessarily fact specific and therefore may not produce comprehensive guidance.

The MetaBirkins decision has the potential to provide important guidance as to what constitutes trademark infringement and constitutionally protectable artistic expression in the context of NFTs. If a jury determines that Rothschild’s MetaBirkins image and his associated NFTs are protectable artistic expression, the trademark owner will grant intellectual property rights to digital NFT marketplace creators and sellers. It can become more difficult to exercise. By contrast, if a jury finds that the Rothschilds have unfairly misled the public and used the Hermès mark for commercial gain, the artist’s freedom of expression in the context of NFTs would be more narrowly restricted, There is a greater risk that certain works will be sold on her NFT. You may enter the realm of trademark infringement.

The content of this article is intended to provide a general guide on the subject. You should seek professional advice for your particular situation.

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