MetaBirkins NFT suit to be tested under Rogers
Fashion designer Hermès’ lawsuit against an artist centring on non-fungible tokens (NFTs) should be tested against a precedent set by a landmark ruling handed down more than two decades ago, according to a US federal judge.
Back in January, the French luxury brand sued Mason Rothschild for allegedly copying its Birkin handbag through the issuance of MetaBirkin NFTs at the US District Court for the Southern District of New York.
Intellectual freedom
Around December 2021, Rothschild created a collection of digital images, each of which depicted an image of a blurry faux-fur-covered Birkin handbag.
In 1989, Rogers v Grimaldi, established the "Rogers test" for protecting uses of trademarks that involve intellectual freedom issues.
According to the ruling, artists can use a trademark if it meets certain artistic criteria and doesn’t mislead consumers.
The Second Circuit affirmed that “suppressing an artistically relevant though ambiguous[ly] title[d] film” on trademark grounds would “unduly restrict expression”.
The court also held that: “In sum, we hold that section 43(a) of the Lanham Act does not bar a minimally relevant use of a celebrity's name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content.”
First Amendment grounds
Rothschild argued that, because the digital images of the Birkin bags are tied to the NFTs he sells, the Second Circuit’s test in Rogers applies, and the lawsuit should be dismissed on First Amendment grounds.
Speaking at the International Trademark Association’s Annual Meeting held earlier this month, Evan Gourvitz, counsel at Ropes & Gray, argued that the rise of NFT legal disputes was unlikely to stretch existing legal parameters and older case law would apply.
The "Rogers test", he explained, had been cited by numerous courts that have adopted its reasoning to protect the use of trademarks in works of creative expression.
“It is interesting that in this lawsuit against Rothschild, the defendant used much older case law to defend it against allegations of infringement,” noted Gourvitz.
“Basically Rothschild argued that these Metabirkins are art, and they’re useable because they are artistically relevant and not explicitly misleading,” he said.
But Hermès countered that the test shouldn’t apply as Rothschild had used the MetaBirkins name as a source identifier rather than the title of an artwork.
Hermes further argued that, even if the Rogers test does apply, the court cannot make factual determinations of artistic relevance or explicit misleadingness at the motion to dismiss stage.
Consumer confusion
Last week, the court concluded that the Rogers test applies, at least in part, to the trademark infringement analysis of Rothschild’s activities.
But the court also held that the fashion designer's complaint includes sufficient allegations of misleading consumers and confusion, and rejected Rothschild’s motion to dismiss.
Based on these plausible allegations in the amended complaint, including Rothschild's own descriptions of the "MetaBirkins" project, the court declined to resolve at this stage whether the “MetaBirkins” cleared the “admittedly low bar of artistic relevance” outlined under Rogers.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
