The battle of ‘Meta-Birkin’ finally comes to an end, with Hermès being declared victorious. The case was based on the creation and sale of non-fungible tokens under the name “Meta Birkin” by artist and creator Mason Rothschild.

Hermès had filed the suit of trademark infringement against Rothschild for the exploitation of its famous “Birkin” bag to create an affiliation between Rothschild’s NFTs as well as the associated website “metabirkins.com”, and Hermès’ brand. The luxury brand stressed that this was likely to create confusion amongst the customers.

In the jury trial dated February 2nd, 2023 an eight-person civil jury found Mason Rothschild liable for trademark violation. While “even the modest elements of artistic expression contained in Rothschild’s works entitled him to total First Amendment protection against Hermès’ claims” Hermès proved that Rothschild intentionally misled consumers into believing that Hermès was backing its products.

Post the verdict provided by the jury, The defendant Rothschild submitted to the court to enter a judgement as a matter of law in his favor according to Federal Rule of Civil Procedure 50 (b) (i.e. setting aside the verdict of the jury) or, in the alternative order a new trial according to Federal Rule of Civil procedure 59 (a). In a separate motion, Rothschild also requested leave to interview the foreperson of the Jury and up to 4 other jurors in light of what he claimed to be a “ substantial possibility that the jurors considered material, prejudicial and erroneous information outside the record in reaching their verdict.”

On the other hand, Hermès applied for a sole motion seeking to personally enjoin Rothschild from taking certain actions (motion seeking permanent injunction) that, in the plaintiff’s view, enabled him to continue infringing and diluting its trademarks.

In the Opinion & Order Re: Permanent Injunction passed by the Court, Justice Rakoff discusses the various other contentions made by Rothschild in order to prevent the order of injunction, most of which were deemed to be frivolous by the court and the manner in which the Court satisfied itself regarding Hermès’ right over the requested remedy i.e. permanent injunction.

Concerning Rothschild’s claim to declare the judgement in his favor as a matter of law under rule 50 (b) or to order a new trial under rule 59 (a), the court held that it must conclude “that the Jury had reached a seriously erroneous result or the verdict is a miscarriage of Justice.”

For Rothschild’s claims of the jury trial being erroneous, the court held that the structure of the manner in which the jury trial had been conducted was proper and correct and allowed members of the society to exercise the reasonable mind and draw the conclusion that Rothschild was indeed liable for trademark infringement of Hermès’ marks as well as cyber-squatting.

Other contentions raised by Rothschild such as the admission of the witness statement of his expert witness Dr Gopnik were also rejected since it was revealed that he did not have a recognizable, describable methodology that he used to reach his conclusions.

With regards to Hermès’ motion for permanent injunction, the brand claimed that Rothschild has continued to promote the sale of the Meta-Birkin NFTs while also seeking to collect a royalty for these sales, through social media platforms and continuing to list the NFTs for sale on different marketplaces.

In the absence of any contrary evidence to that effect provided by Rothschild, Hermès in its motion for permanent injunction listed seven things that the court ordered Rothschild to do. They are listed as follows:

• To discontinue his use of the “Birkin” marks and generally refrain from misleading the public about an association between his NFT project and Hermès.
• To transfer the metabirkins.com domain name and related social media accounts featuring the Bikrin mark to Hermès.
• To transfer any Meta-Birkins NFTs in his possession, including the smart contracts associated with each NFT, to a “cryptocurrency wallet” designated by Hermès.
• To notify Hermès of any income received from the Meta-Birkins NFTs and transfer the income to Hermès.
• To notify anyone who purchased a Meta-Birkins NFT of the relief described in the permanent injunction, assuming one is issued.
• To file a declaration confirming his compliance with the permanent injunction within thirty-one days of the Country’s entry of its order.
• To preserve documents that relate to this lawsuit.

According to the law of the land, to obtain injunctive relief against Rothschild, Hermès must clearly show “(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.”

Concerning the first three conditions, Hermès was sufficiently able to prove its claims for injunctive relief, however to any harm caused to third-party persons or the public interest, Rothschild argues that the third parties’ First Amendment rights would be eviscerated by a Court order directing the artist to transfer the “smart contract” of each NFT to the company. This is because Hermès, if it were to receive a “smart contract” from Rothschild, would presumably alter the NFTs smart contract so that the NFTs are not linked to digital images of Birkin bags.

However, this concern was also later obviated as the court decided to decline an order to transfer the Meta-Birkins NFT and their smart contracts to Hermès.

Rothschild’s insistence that a disclaimer namely, “MetaBirkins are artworks by Mason Rothschild and are not affiliated with or endorsed or sponsored by Hermès” was also rejected in light of the recent judgement of the U.S. Supreme Court in the Jack Daniel’s Products case, where it was found that such a disclaimer was insufficient to avoid confusion.

Accordingly, Hermès satisfied itself with all the conditions necessary to seek a permanent injunction against Rothschild. Finally, however, the court takes it upon itself to determine precisely what equitable relief is appropriate in the case. Accordingly, the court grants the relief of permanent injunction to Hermès, except for the transfer of any MetaBirkins NFTs in Rothschild’s possession, including smart contracts to Hermès on the account of the NFTs being works of art.