Hermès Case Gives Guidance on How Trademark Law Applies to NFTs

Intellectual property and litigation attorneys Thomas Brooke and Danielle Garno, along with Law Clerk Rodrigo Javier Velasco, co-authored an article for Daily Business Review analyzing a federal case that provides guidance on how courts will treat trademark claims involving non-fungible tokens (NFTs). The case involves a dispute between artist Mason Rothschild and French luxury brand Hermès International. Rothschild produced and sold MetaBirkin NFTs, which are digital images of furry versions of Hermès' Birkin bag. Hermès argued that the MetaBirkin NFTs infringed on its BIRKIN trademark, whereas Rothschild countered that the NFTs were artwork and therefore protected by the Rogers test, which says the use of a name or mark for artistic purposes does not necessarily constitute infringement.

Judge Jed Rakoff of the U.S. District Court for the Southern District of New York recently issued an order denying Rothschild's motion to dismiss the case but holding that the Rogers test applied, setting the stage for litigation. In this article, the authors analyze the parties' arguments and the court's decision as well as explain the implications for brand owners seeking to protect their intellectual property in the metaverse.

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