"Metabirkin" NFTs: Copyright infringement or art?

When fashion and NFTs collide, it’s not a pretty sight. Copyright infringement in the fashion industry occurs in the digital space when someone reproduces or distributes copyrighted designs or images without permission. This could include copying, modifying or distributing images of clothing designs, textile patterns or other creative works. The digital space has made it easier to access and copy designs, which can result in copyright infringement, subsequently leading to lost revenue for fashion designers and brands, damage to their reputation, and legal action.

Speaking of legal action, there is a significant development in the ongoing legal battle between artist Mason Rothschild and luxury brand Hermès, the oldest family-owned fashion house in France. In February, a Manhattan federal jury concluded that the artist’s non-fungible tokens resembling the iconic Birkin bag violated Hermès’ trademark rights which determined that the NFTs — which were never commissioned or authorized by Hermès — had the potential to confuse consumers and awarded Hermès $133,000 in damages for trademark infringement, dilution and cybersquatting. Last week, the French luxury fashion brand filed a motion for permanent injunctive relief, seeking to force the artist to turn over to Hermès all materials related to the MetaBirkins NFT artworks, including the MetaBirkins smart contract, the website domain and the social media handles associated with the project. The Order of Permanent Injunction, further stated, “It is further ORDERED that Rothschild shall, within 10 days of the date of this Order, at Rothschild’s expense: a. Contact by e-mail, text, or other written form of communication all persons to whom he gave, sold, issued, or distributed a MetaBirkins NFT artwork or whitelist spot to mint a MetaBirkins NFT artwork, and provide each of those persons with a copy of this Order; and b. Airdrop to all MetaBirkins NFT holders a copy of this Order.”

Image Source: Official instagram account of artist Mason Rothschild

Mason Rothschild took a stand by filing two new documents with the U.S. District Court for the Southern District of New York on March 14, contesting the permanent injunction to cease creating and distributing the art. Through his legal team, Rothschild has requested the court to deny Hermès’ request in its entirety or order the use of a disclaimer with promotion and sales of MetaBirkins to protect his first Amendment Rights and the rights of MetaBirkins owners to eliminate any confusion with Hermès. “Under the facts and circumstances of this case, use of a disclaimer—rather than seizure of artworks and related materials, as requested by Hermès—is an adequate and appropriate remedy that would balance both the First Amendment and trademark rights at issue. This is especially so because the evidence shows that Hermès will not suffer irreparable harm absent the draconian injunction that it seeks, given the weak—if not legally insufficient—evidence of confusion and the sophistication of purchasers of both Hermès’ products and Mr. Rothschild’s MetaBirkins artworks.” Additionally, Rothschild’s team has filed a Renewed Motion for Judgment as a Matter of Law or New Trial that details the errors made by the Court in sending the case to a jury and in excluding at trial the expert testimony of noted art critic and historian Dr. Blake Gopnik. 

“I hope Hermes understands that I won’t be intimidated”, claimed the artist on the official metabirkins instagram account.

The artist has been vocal on his social media channels about his refusal to back down from his artwork, the legal battle, and his right to exercise his First Amendment rights. “I pride myself on being early to things, web3 included, and sometimes that comes with growing pains like this,” he claimed on Instagram. “Knocked down. Not dead.” The ongoing legal battle once again highlights the importance of obtaining permission before using copyrighted images or designs, creating original works, or using open-source designs that are available for public use… in order to avoid being accused of copyright infringement. The case is being closely followed by the art and fashion cognescanti for clarification on how trademark law might apply to NFTs and marks one of the first intellectual property trials of its kind. Stay tuned to this space for more details on the case!