Vive La Trademark: Hermès Wins MetaBirkin Battle…For Now

Alyssa GarciaNews & Insights

By Alyssa R. Garcia

At the close of the recent trial between luxury brand Hermès and nonfungible token (“NFT”) artist Mason Rothschild,[1] the jury returned a verdict in favor of Hermès, finding that by selling his “MetaBirkin” NFTs, Rothschild infringed upon Hermès’ trademark of the term “Birkin.”[2] The jury also found that Rothschild’s actions constituted trademark dilution and cybersquatting, leaving Rothschild on the hook for $133,000 in damages.[3] However, the case appears far from over as Rothschild has already announced his plans to appeal, commenting that the verdict rewarded “[a] multi-billion luxury fashion house who says they ‘care’ about art and artists but feel they have the right to choose what art is and who is an artist.”[4]

The focal point of the case was Rothschild’s use of the name MetaBirkins, including the domain name “metabirkins.com,” similar to the name of Hermès’ coveted “Birkin” handbag and associated trademark.[5] The jury found that this use constituted cybersquatting, the act of using a domain name that is “confusingly similar” to a protected mark in bad faith with intent to profit from it.[6] Rothschild had used the website to sell his NFT artworks, all of which were colorful, faux-fur-covered renditions of the famed “Birkin” bag.[7] The jury was not swayed by Rothschild’s argument that he was using the Hermès name as a “conceptual art” commentary on “the perceived value in luxury goods.”[8] Instead, they found that his intent was to profit from the Hermès brand, as evidenced by his statement that the brand was a “gold mine” for him.[9]

One focus of the trial was whether the First Amendment protected Rothschild’s use of the Birkin trademark in his NFTs. Under the Rogers Test, which originates from a 1989 case involving the use of celebrity names in movie titles, a work requires a minimal level of artistic relevance, and prohibits explicit misleading of consumers, in order for its use to be protected under the First Amendment.[10] By finding for Hermès, the jury signaled that Rothschild’s use of the “Birkin” trademark was not sufficiently artistically relevant to qualify for First Amendment protection and was indeed explicitly used to mislead consumers.[11] Much of the evidence seemed to indicate that Rothschild’s motivation behind the use was purely financial, ultimately dooming his First Amendment Rogers defense in the eyes of the jury.[12]

Rothschild sought to compare his NFTs to Andy Warhol’s silk-screen prints of Campbell’s soup cans, however, he was prevented from presenting expert testimony to that effect.[13] It is not clear that this analogy would have benefitted Rothschild, as “Campbell’s never sued Warhol because his art was increasing soup sales and not creating any actual confusion between the pop art and the soup maker” unlike in this case where there were allegations of intentionally creating confusion.[14] The jury was left to use other evidence to determine whether “MetaBirkins” were so similar to the Hermès products that they resulted in consumer confusion, particularly given that Hermès had plans to debut its own NFTs.[15] Some of the evidence included testimony from Hermès’ head of innovation, Maximilien Moulin, who explained that, given all the similarities, MetaBirkins could confuse consumers as to whether they actually originated with Hermès.[16] 

Alfred Steiner, an intellectual property attorney and artist, opined after the verdict that “[t]he commentary in Mason’s work was probably more difficult to discern because it was subtle . . . It may have been lost on a pool of jury members or the general public.”[17] Thus, the evidence that Rothschild’s work was so similar to the Birkin mark, and intentionally so, supported the jury’s conclusion that Rothschild’s NFTs infringed upon Hermès’ trademark and that his actions were not protected as artistic expression under the First Amendment.

Despite Rothschild’s loss in court, the outcome of this case is significant as one of the first jury decisions regarding the intersection of NFTs and intellectual property law.[18] As long as NFTs remain relevant, it is likely that additional legal disputes will arise over their use and ownership. This case’s outcome suggests that, as far as NFTs are concerned, trademark protection interests may weigh more heavily than certain alleged First Amendment protections in a court’s eyes. Rothschild has stated that he will continue to fight for artistic freedom.[19] His arguments on appeal are likely to focus on the First Amendment and the importance of artistic expression, and his legal team expressed confidence that they would have support from both the art and NFT communities in challenging the jury’s verdict.[20] Hermès sees through Rothschild’s attempts “to litigate their trademark dispute ‘in the press’” and is beginning to respond accordingly.[21] In the interim, the Hermès v. Rothschild verdict is an important milestone in the ongoing debate over the use of trademarks in NFTs.


[1] Hermes Int’l SA v. Rothschild, No. 1:22-cv-00384-JSR (S.D.N.Y).

[2] Isaiah Poritz, Hermès Defeats MetaBirkins in the First NFT Trademark Trial, Bloomberg Law (Feb. 8, 2023), https://news.bloomberglaw.com/ip-law/hermes-gets-win-over-metabirkins-in-first-nft-trademark-trial.

[3] Blake Brittain, Hermes Wins U.S. Trademark Trial Over ‘MetaBirkin’ NFTs, Reuters (Feb. 8, 2023), https://www.reuters.com/legal/hermes-wins-us-trademark-trial-over-metabirkin-nfts-defendants-lawyer-2023-02-08/.

[4] Maghan McDowell, Hermès Wins Case Against MetaBirkins Over Digital NFTs, Rothschild to Appeal, Vogue Business (Feb. 8, 2023), https://www.voguebusiness.com/technology/hermes-wins-case-against-metabirkins-over-digital-nfts-rothschild-to-appeal.

[5] Poritz, supra note 2.

[6] 15 U.S.C. § 1125(d).

[7] Rosemary Feitelberg, Hermès Wins Court Battle Against Mason Rothschild Over ‘MetaBirkins’ NFTs, Women’s Wear Daily (Feb. 8, 2023), https://wwd.com/fashion-news/designer-luxury/hermes-wins-court-battle-over-metabirkins-nfts-mason-rothschild-1235510445/.

[8] Pete Brush, Would-Be Warhol Saw His ‘MetaBirkin’ NFTs As A ‘Gold Mine’, Law360 (Feb. 1, 2023), https://www.law360.com/articles/1571741; see also Feitelberg, supra note 7.

[9]  Brush, supra note 8.

[10] Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).

[11] Pete Brush, ‘MetaBirkins’ NFT Maker Held Liable In Key TM Trial, Law360 (Feb. 8, 2023), https://www.law360.com/articles/1572690.

[12] Id.

[13] Isaiah Poritz, Andy Warhol Art Expert Excluded From Hermès Metabirkin NFT Trial, Bloomberg Law (Jan. 30, 2023), https://news.bloomberglaw.com/ip-law/andy-warhol-art-expert-excluded-from-hermes-metabirkin-nft-trial.

[14] Brian Moriarty, Joshua Matloff, and Kristen Salvaggio, ‘MetaBirkn’ NFT Verdict Is Actually Good for Digital Artists, Law 360 (Feb. 16, 2023), https://www.law360.com/articles/1576903.

[15] Feitelberg, supra note 7.

[16] Pete Bush, ‘MetaBirkins’ Could Confuse Clientele, Hermes Manager Says, Law 360 (Feb. 3, 2023), https://www.law360.com/articles/1572826.

[17] Poritz, supra note 2.

[18] McDowell, supra note 4.

[19] Mason Rothschild (@MasonRothschild), Twitter (Feb. 8, 2023, 9:04 AM), https://twitter.com/MasonRothschild/status/1623367118493257730?lang=en.

[20] Feitelberg, supra note 7.

[21] Andrew Karpan, Hermes Says ‘MetaBirkins’ NFT Maker is Playing the Press, Law360 (Mar. 29, 2023), https://www.law360.com/articles/1591359.