The short answer
On 8 February 2023 a federal jury in New York found that Mason Rothschild's MetaBirkins NFTs infringed and diluted Hermès's Birkin trademarks and awarded USD 133,000. The appeal (No. 23-1081) was argued on 23 October 2024 and turns on whether the NFTs are protected artistic expression under the Rogers test.
Case snapshot
| Item | Detail |
|---|---|
| Court | US District Court (S.D.N.Y.), Judge Rakoff; appeal to the Second Circuit (No. 23-1081) |
| Verdict | 8 February 2023 (after three days of deliberation) |
| Parties | Hermès International, et al. v Mason Rothschild |
| IP area | Trademark infringement, dilution, cybersquatting; NFTs; First Amendment |
| Damages | USD 133,000 (USD 110,000 estimated NFT profits + USD 23,000 cybersquatting) |
| Status | Appeal argued 23 October 2024; we could not confirm the appeal decision |
Background and facts
Mason Rothschild created and sold "MetaBirkins" NFTs showing digital images of fur-covered Birkin handbags. Hermès, owner of the Birkin trademarks, sued for infringement and dilution.
Rothschild argued that the NFTs were art, protected by the First Amendment under the Rogers v Grimaldi test, which shields expressive works from trademark claims unless the use has no artistic relevance or is explicitly misleading.
The legal question
- Do MetaBirkins NFTs infringe or dilute the Birkin trademarks?
- Does the Rogers test protect the NFTs as artistic expression, or do they function as a brand that identifies a source?
The court's reasoning
The jury found Rothschild liable for infringing and diluting Hermès's trademarks and for cybersquatting, and awarded USD 133,000.
- On appeal Rothschild argues that Judge Rakoff misapplied Rogers, including by focusing on his subjective intent.
- Hermès answers that the First Amendment gives artists no special licence to use an infringing mark for source identification, and relies on the Supreme Court decision in Jack Daniel's v VIP Products (2023).
- At the October 2024 argument a Second Circuit panel member observed that Jack Daniel's "doesn't say what to do if Rogers does not apply", and the panel was reported to appear divided.
Result and outcome
The jury verdict stands as the trial outcome. Our sources describe the appeal briefing and argument but not a decision, so the final outcome should be checked on the Second Circuit docket.
Analysis: why this case matters
The case is the first big test of trademark law for NFTs. It asks whether a digital artwork that uses a famous mark as its title and image is art or a brand.
It also shows how the Supreme Court's 2023 Jack Daniel's ruling narrowed Rogers for uses that act as a source identifier, a point at the centre of the appeal.
Practical lessons for brand owners and inventors
- Brand owners should watch NFT and metaverse markets and act early on unauthorised uses of famous marks.
- Creators should avoid using famous marks as names for their own commercial products, even in artistic projects.
- Evidence of how the name is used in the market (branding, marketing) matters more than the claim that it is art.
- Register marks for digital goods and virtual services where relevant.
Sources and further reading
Mondaq: jury finds MetaBirkins NFT branding infringes the Birkin trademark
The Fashion Law: Hermès and Rothschild's MetaBirkins fight heads to the Second Circuit
IPWatchdog: The Second Circuit's MetaBirkin dilemma
The appeal result was not found in the sources we reviewed. Check the Second Circuit docket (No. 23-1081) for the decision.
Questions and answers
How much did the jury award Hermès?
USD 133,000.
What is the Rogers test?
A test that protects expressive works from trademark claims unless the use has no artistic relevance or is explicitly misleading.
Is the case finished?
The appeal was argued on 23 October 2024; check the docket for the decision.
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