15 February 2022TrademarksMuireann Bolger

Designer seeks to escape Hermès NFT suit

Artist Mason Rothschild is attempting to secure the dismissal of a trademark infringement suit brought against him by Hermès over Rothschild’s sale of non-fungible tokens (NFTs) of the fashion brand’s iconic Birkin bag.

In January, the French luxury brand filed suit at the US District Court for the Eastern District of New York, contending that Rothschild’s ‘ MetaBirkins’ NFTs rip off Hermès’ Birkin bag trademark by adding the generic prefix “meta”.

According to Hermès’ suit, Rothschild is “seeking to get rich quick” by appropriating the brand ‘MetaBirkins’, while attempting to make his fortune by swapping out Hermès’ “real life” rights for “virtual rights”.

Last week, on Wednesday, February 9, Rothschild filed a motion to dismiss the complaint, claiming that the First Amendment “guarantees his right to respond in the marketplace of ideas to the inescapable corporate brand messages by which we are bombarded every day, virtually everywhere we look”.

California-based Rothschild said that each of the 100 works in the ‘MetaBirkins’ series is a “unique, fanciful interpretation of a Birkin bag” and each bag is depicted as fur covered.

“This aspect of Rothschild’s ‘MetaBirkins’ art comments on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags,” said the memorandum in support of the motion to dismiss.

It added: “These images, and the NFTs that authenticate them, are not handbags; they carry nothing but meaning. Hermès asks this court to suppress Rothschild’s art and to restrain his protected speech in the service of protecting Hermès’ commercial interest in its trademarks.”

Rothschild partly relies on the landmark case of Rogers v. Grimaldi, which spawned the Rogers test. In the Rogers case, the US Court of Appeals for the Second Circuit had rejected a claim by actress and dancer Ginger Rogers that the use of her name in the title of the motion picture “Ginger and Fredinfringed her rights in her name.

The test establishes that the Lanham Act should not be applied unless the use of the trademark has no artistic relevance to the underlying work or, where there is artistic relevance, it explicitly misleads as to the source or content of the work.

The memorandum claimed that, in satisfying the first prong of the Rogers test (artistic relevance), there “can be no doubt that Rothschild’s depictions of Birkin bags in his artwork, and the use of the ‘MetaBirkins’ name to explain what he has depicted, easily exceed this low threshold of artistic relevance”.

Rothschild goes on to argue that the use is not explicitly misleading.

“Any inference a consumer might draw about the relationship between the ‘MetaBirkins’ artworks and Hermès is not due to anything that is “explicitly misleading” in Rothschild’s uses of the term ‘MetaBirkins’, and, as a consequence, Rothschild’s First Amendment speech rights must take precedence over Hermès’ trademark complaints,” said the memorandum.

Rothschild further argued that, even if Rogers doesn’t apply, the US Supreme Court’s decision in Dastar Corp v Twentieth Century Fox Film Corp would be “fatal” to Hermès’ claims.

The memorandum argued that Hermès “fundamental complaint”—that consumers will believe the ‘MetaBirkins’ artworks are sponsored by or affiliated with Hermès—is blocked by the Dastar ruling, which “unambiguously holds that only misrepresentations of the origin of physical goods are actionable under the Lanham Act”.

On Hermès other claims, including trademark dilution and cybersquatting, Rothschild alleged that they all focus on the “same speech that is protected under Rogers, which rejects the underlying premise of each claim that artistically relevant depictions of trademarks can be wrongful in the absence of explicit falsity”.

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

Super Lighting’s ‘unheard’ of LED patent success

China tackles rogue Olympic IP filings targeting Eileen Gu

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at

More on this story

18 January 2022   Hermès has accused a self-described artist who developed non-fungible tokens of the fashion brand’s iconic Birkin bag of trademark infringement.
1 February 2022   In the Bitcoin whitepaper, Satoshi Nakamoto detailed a “purely peer-to-peer version of electronic cash” using timestamps to form a chain of transactions to keep a “public history of transactions”.