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After an earlier victory, Hermès obtains a permanent injunction against the artist Mason Rothschild.
Background:
In 2021, American artist Mason Rothschild had created images in the form of NFTs reproducing the Birkin bags of the luxury house Hermès in fur. The artist offered the NFTs for sale on its <metabirkins.com> website. On January 14, 2022, Hermès filed an infringement action under trademark law, accusing the artist of damaging its brand image and cybersquatting.
The artist invoked his freedom of artistic expression, notably denouncing animal mistreatment in the luxury goods industry through his NFTs. The judges ruled that the artist could not invoke the First Amendment to the US Constitution because of the risk of confusion created with the trademark in question. In a decision dated February 14, 2023, the court handed down a final judgment in favor of Hermès, finding Mason Rothschild liable for trademark infringement and dilution, as well as cybersquatting.
On March 3, 2023, Hermès had filed a motion for a permanent injunction against the artist to permanently block the sale and promotion of the NFTs.
Mason Rothschild’s lawyer asked for a new judgment or trial.
On June 23, 2023, the court issued an order denying Rothschild’s request and granting the permanent injunction. Judge Jed Rakoff justified his decision on the basis of the likelihood that continued marketing of NFTs would generate confusion in the public mind.
The judge and jury found that the artist had deliberately sought to lead consumers to believe that MetaBirkin NFTs were associated with Hermès brands, in particular the Birkin brand. The judge also ordered Rothschild to transfer the <metabirkins.com> domain name, and to return the profits made from the NFTs since the start of the trial to Hermès.
Although this decision is not intended to apply on European territory, it is reassuring for all economic actors and confirms that the metaverse, the world of NFTs, or immaterial goods in general, is not a legal no man’s land. In this case, the judge has focused on legal rules that are known and applicable in the real world.
– Emma TRANCART, legal intern at Mark & Law
