Hermès has won a permanent ban preventing Mason Rothschild from selling his MetaBirkins NFTs, after the French luxury goods maker accused him of violating its trademark for Birkin handbags
Hermès Secures Permanent Ban on MetaBirkin NFTs in Trademark Win
A federal judge in Manhattan has issued an order that permanently bars Mason Rothschild from selling his MetaBirkins NFTs after Hermès won its legal battle against him. In February, the luxury goods maker accused Rothschild of violating the company’s trademark for Birkin handbags with his line of 100 “MetaBirkins” NFTs. The jury sided with Hermès, and Rothschild was ordered to pay $133,000 in damages. The order delivered on Friday also permanently enjoins Rothschild on several fronts, significantly restricting the future use of MetaBirkins.
The order prevents Rothschild and associates from marketing, selling, and minting MetaBirkins NFTs and prohibits him from making statements that could lead people to associate MetaBirkins with Hermés in the future. Additionally, Rothschild is not allowed to provide any benefits to Metabirkins holders that would incentivize people to purchase the NFTs, such as airdrops. However, he is required to airdrop Friday’s court order to people that currently hold the tokens.
Hermès’ lawsuit against Rothschild highlights the challenges brands face in protecting intellectual property when it comes to NFTs. Big brands often consider launching digital collectibles but must deal with a community built up around decentralization and a permissionless culture. In February, the court found Rothschild liable for trademark infringement, trademark dilution, and cybersquatting despite his artistic expression defense.
After its legal victory over Rothschild earlier this year, Hermès claimed in a March filing that he “continues to promote the sale” of MetaBirkins NFTs on social media and marketplace listings while also seeking to collect a royalty for these sales. The luxury goods maker requested that Rothschild be forced to transfer MetaBirkins NFTs he still owns to a wallet designated by Hermès.
Judge Rakoff elected not to side with Hermès on forcing Rothschild to relinquish control of the collection’s Ethereum smart contract, explaining that MetaBirkins NFTs are at least in some respects works of art. A narrower injunction was necessary “out of an abundance of caution” with respect to free speech. While Rothschild can still maintain ownership of MetaBirkins NFTs, he is ordered to give up any domain names associated with Hermès Birkins’ trademark, including metabirkins.com.
Rothschild has been ordered to transfer the domain name by July 15, which will subsequently be archived by Hermès. The verdict raises questions about whether this ruling will set a precedent for future cases involving NFTs and intellectual property rights. It remains unclear how other luxury brands will approach the emerging frontier of NFTs and digital collectibles while navigating decentralization and permissionless culture.