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7 March 2023TrademarksMuireann Bolger

Hermès escalates MetaBirkin feud following landmark win

Luxury brand says Rothschild has continued to “brazenly violate” Hermès’s IP by selling MetaBirkin NFTs | Control over smart contract is at heart of ongoing dispute | Designer has rallied support online and in media outlets.

Fashion house Hermès International has demanded an injunction against designer Mason Rothschild, following its high-profile trademark infringement victory against the MetaBirkin creator last month.

The luxury company filed the request at the US District for the Southern District of New York on March 3.

The move comes after a jury unanimously found Rothschild liable on Hermès’s claims for trademark infringement, trademark dilution, and cybersquatting.

It further found that First Amendment protection did not bar his liability and unanimously awarded Hermès damages in the total amount of $133,000.

But according to the luxury fashion house, these damages are inadequate compensation for “the irreparable harm it has suffered and is suffering”.

Smart contract is ‘source of infringement’

Rothschild has, since the verdict, continued to “brazenly violate Hermès’s IP rights by selling his infringing MetaBirkin NFTs while also seeking to collect a royalty for these sales”, Hermès alleged.

In the latest memorandum, Hermès asked that Los Angeles-based Rothschild be ordered to transfer any MetaBirkins NFTs in his possession along with the MetaBirkin domain name, and, crucially, his smart contract.

According to Hermès, the MetaBirkins smart contract is the source of the infringing products—the NFTs. This, it added, is “because it allows for the creation of new infringing products and [is] the means by which Rothschild can derive benefit and cause harm by intentionally misleading conduct”.

The French fashion firm contended that if Rothschild maintains control of this smart contract, he can proceed to mint new NFTs, set and collect royalties, and change the digital file to which the MetaBirkins NFTs are linked to.

He may also enter into agreements with metaverse platforms to enable integration of the NFTs into their platforms, and transfer or sell the MetaBirkin NFT smart contract to a third-party who could do the same, added Hermès.

Hermès went on to say that shortly after the verdict was delivered, Rothschild defied the court’s findings by promoting his MetaBirkin Instagram account on several occasions, retweeting from the MetaBirkin Twitter account, and posting tweets and articles on his MetaBirkin Discord server.

It added that: “The jury concluded that Rothschild engaged in trademark infringement, trademark dilution, and cybersquatting. Everyone witnessing the trial saw that Rothschild’s relationship with the truth is a rocky one, and even his counsel acknowledged that he is less than candid. Rather than treating the jury verdict as a final adjudication, Rothschild has continued acting as he has since November 2021…”

Not trustworthy

The complaint insisted that Rothschild will continue infringing, unless he is prevented from doing so, because “he has shown that he cannot be trusted”.

To prove its point, Hermès referred to a text message Rothschild sent to his business associates stating he does not “think people realise how much you can get away in art by saying ‘in the style of’”.

“This text message shows Rothschild bragging about using art as a pretext to capitalise on the reputation and goodwill of Hermès’s Birkin marks,” said Hermès during the trial.

The memorandum added: “As the prevailing party in a trademark infringement suit, Hermès has the right to seek an injunction. Here, Hermès has no choice but to seek a permanent injunction. Hermès’s request for injunctive relief is narrowly tailored and should be granted in its entirety.”

‘Gross overreach’

Hermès also pointed to Rothschild’s actions in encouraging his followers to share and retweet his statements as covered by The New York Times in support of his plea for freedom of speech and artistic expression.

In a statement to WIPR, Rothschild’s counsel Rhett Millsaps, managing partner of Lex Lumina, said:

“As plaintiffs, Hermès gets to file their argument first. This case is far from over. This latest filing is a gross overreach by Hermès and an attempt to punish Rothschild because they don’t like his art, but what’s new? Rothschild will be responding in the court in due course.”

On February 24, Rothschild’s ally and art expert Blake Gopnik published an article titled ‘A misguided jury failed to see the art in Mason Rothschild’s MetaBirkins’ in The Washington Post.

Hermès referred to such post-trial actions in its memorandum, insisting that “the balancing of the hardships weighs in favour of Hermès”.

WIPR has approached Hermès for comment.

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