Federal Judge Permanently Bars Metabirkins NFT Maker from Selling Birkin-Based Collectibles

Updated: 27 June 2023

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In a groundbreaking decision, a federal judge in Manhattan has handed down a permanent ban on Rothschild, an NFT maker, prohibiting the sale of highly controversial Birkin-based collectibles, MetaBirkins NFTs.

The judge’s order comes several months after a jury found the NFT collection’s maker infringed on Hermes’ intellectual property.

🧵 2/: Hey peeps! Have you heard about the recent legal development involving MetaBirkins, the NFT maker?

🎨🔗 Well, federal judge has just issued a permanent ban prohibiting them from selling their Birkin-based collectibles! 😲🚫#federal #judge #nft

— sanjeev Dsr (@Varisuthehunter) June 27, 2023

Presiding over the case, Judge Jed Rakoff ordered Mason Rothchild and his associates to abstain from minting or selling MetaBirkins NFTs or using online domains associated with the collection.

Based on the jury’s findings, Mason Rothschild was accused of attempting to mislead consumers about his digital art pieces’ connection to Hermes’ luxury bags.

In his ruling, Judge Rakoff noted, “As the jury expressly found, Rothschild, a self-described ‘marketing strategist,’ purposely sought (with some success) to confuse consumers into believing that his non-fungible tokens (NFTs), labeled ‘MetaBirkins…’ were affiliated with Hermes’ iconic ‘Birkin’ trademarks.”

The judge also noted, “In effect, the jury found that Rothschild was simply a swindler.”

Injunction Ends Month-Long Lawsuit

For a while now, MetaBirkins has been facing allegations of trademark infringement for producing and selling NFTs that depict digital versions of the Birkin bag.

The company’s attempt to capitalize on the allure and prestige of the collectibles without authorization sparked outrage within the digital collectibles community, leading to subsequent legal action.

During the proceedings in February, the court ruled against Rothschild, citing that he was responsible for trademark infringement, dilution of trademarks, and cybersquatting.

Despite his argument based on artistic expression, the jury determined that Rothschild deliberately deceived consumers by falsely suggesting that Hermes supported the project.

After that legal victory, Hermes claimed in a March filing that Rothschild went on to promote the sale of MetaBirkins NFTs on social media and marketplace listings while seeking to collect royalties for these sales.

2/ According to the motion, Rothschild is still promoting the NFTs at issue via social media channels and profiting from the METABIRKINS NFTs via NFT marketplace LooksRare on 7.5% royalty fees, portion of transaction fees, and trading award fees.

— NeerMcD.eth (@NeerMcD) March 5, 2023

Hermes went on to request that Rothschild be forced to transfer the MetaBirkins NFTs he still owns to a wallet designated by Hermes. They also requested that Rothschild relinquish control of the collection’s Ethereum smart contract.

Intellectual Property Rights

In the recent ruling, different from the earlier one, Judge Rakoff chose not to side with Hermes on relinquishing all control.

The judge noted, “MetaBirkins NFTs are at least in some respect works of art,” indicating a narrower injunction, cited out of an abundance of caution while respecting free speech. While Rothschild can still maintain ownership of MetaBirkins NFTs, he has to give up any domain names associated with Hermes Birkins’ trademark.

Rothschild has been ordered to transfer the domain name by July 15.

Many argue that NFTs represent a new form of art and self-expression. However, the court’s ruling emphasizes the importance of striking a balance between creative freedom and the protection of established brands.

As NFTs gain mainstream recognition, creators and platforms must navigate such legal complexities. Legal disputes like this one are likely to become more common. One must familiarize themselves with intellectual property laws and seek legal advice when necessary to ensure compliance and mitigate potential legal risks.

The outcome of this case highlights the significance of trademark enforcement in the digital age. It becomes crucial for creators, platforms, and investors to be aware of copyright and trademark laws to avoid infringing on established brands and facing legal consequences.