Hermes lawsuit over 'MetaBirkins' NFTs can move ahead, judge rules

(Reuters) - Hermes International SA persuaded a Manhattan federal judge on Thursday not to throw out its trademark lawsuit against an artist for selling "MetaBirkins" non-fungible tokens depicting the French fashion house's Birkin bags.

U.S. District Judge Jed Rakoff rejected Mason Rothschild's motion to dismiss the case in a one-page order following a Wednesday hearing. He said he would lay out his reasoning in a later opinion.

The case is being watched for its potential to clarify how trademark law will be applied to NFTs, newly popular digital assets that can be used to verify an artwork's authenticity.

An attorney for Rothschild declined to comment. Hermes and its attorneys did not immediately respond to a request for comment.

Hermes sued Rothschild in January over his MetaBirkins, which depict the company's Birkin bags covered in colorful fur. Hermes' lawsuit said Rothschild began offering the NFTs at the Art Basel art fair in Miami in December without its permission and had sold over $1 million worth of them by early January.

The company called Rothschild a "digital speculator" and MetaBirkins a "get rich quick" scheme and said "the title of 'artist'" does not let him use the Birkin trademark to mislead consumers.

Rothschild argued in a March filing that the works comment on the "cruelty inherent in Hermes' manufacture of its ultra-expensive leather handbags" and are protected by the First Amendment of the U.S. Constitution.

The filing also said his art "does not lose its First Amendment protection just because he sells it" or uses NFTs to authenticate it.

The case is Hermes International v. Rothschild, U.S. District Court for the Southern District of New York, No. 1:22-cv-00384.

For Hermes: Gerald Ferguson, Deborah Wilcox, and Oren Warshavsky of Baker & Hostetler

For Rothschild: Rebecca Tushnet, Mark McKenna, Rhett Millsaps and Christopher Sprigman of Lex Lumina

Our Standards: The Thomson Reuters Trust Principles.