Ongoing Hermes vs. Mason Rothschild case yields new developments

By

Roxanne Robinson

Published
Mar 17, 2023

The metaverse continues to test the boundaries and laws of the real world. In what has become a widely existential battle between art and copyright infringement in the digital space, Mason Rothschild, nee Sonny Estival, has filed two new documents in the ongoing case with French luxury powerhouse Hermès with the U.S. District Court for the Southern District of New York on March 14. The multi-media artist is contesting the permanent injunction to cease creating and distributing the art as well as requesting a new trial.

In early February, a Manhattan federal jury concluded that the non-fungible tokens made to resemble the iconic Birkin bag violated Hermès trademark rights which determined the NFTs, which were never commissioned or authorized by Hermès, had the potential to confuse consumers and awarded Hermès (also referred to as Hermès International and Hermès of Paris, Inc. in court documents) $133,000 in damages for trademark infringement, dilution, and cybersquatting.
 
In what is shaping up to be a classic David vs. Goliath case, last week, the French company filed another motion to request permanent injunctive relief. The new petition seeks to force the artist to relinquish to Hermès all materials related to the MetaBirkins NFT artworks, including the MetaBirkins smart contract and the website domain and social media handles associated with the project, according to a spokesperson for Rothschild.
 
Via his legal team, the artist requests the Court deny Hermès' petition for several reasons outlined in several court documents: number 173 - Rothschild Judgment as a Matter of Law brief and number 175 - Rothschild Injunction Opposition Brief. The legal team also filed document Number 176, requesting a disclaimer imposed by the Court as opposed to Hermès proposed permanent injunction against Rothschild's MetaBirkin art and related materials rather than turn over control of the IP and channels such as website and social media feeds.
 
The claim attests to dishonest conduct by Hermès' representative and expert witnesses at trial. Suppose this basis doesn't make the proposal null and void. In that case, the artist requests the Court to order the use of a disclaimer with the promotion and sales of MetaBirkins to protect his First Amendment rights and the rights of MetaBirkins owners while eliminating any confusion with Hermès. Rothschild's arguments are laid out in the attached brief (Defendant's Memorandum of Law in Opposition to Plaintiffs' Motion for Permanent Injunction).
 
According to the document, one aspect of this refers to artistic reference—a widely established practice in the fine arts—that may accidentally result in consumer confusion but is different than intentionally trying to confuse the public. According to the court document, the First Amendment protects the former, even if the artist references a well-known brand.
 
Several of the arguments used refer to previous rulings, such as the Twin Peaks "particularly compelling" evidence of confusion standard, which refers to a 1993 ruling around the popular dark TV show by David Lynch and Mark Frost. The Twin Peaks Productions vs. Productions Intern case revolved around a book written on the show's first eight episodes by an individual unrelated to the production; thus, a copyright issue arose to determine whether a book containing a detailed plot summary of fictional work was fair game for another fictional work. The ruling was in favor of the Lynch/Frost production.
 
The artist's legal team attests that The Rogers test—based on a 1989 ruling setting a precedent for whether Rothschild intended to confuse his customers—was not applied properly. The case referred to a Federico Fellini movie that depicted two characters named Ginger and Fred but was not about the famous first-name basis 1930s dance duo. Actress, Ginger Rogers sued Fellini, claiming the defendant Fellini violated the Lanham Act—  a national system of trademark registration established in 1946 that protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion or if the dilution of a famous mark is likely to occur —by presenting a false impression the film was about her among other complaints.
 
The defendant is also contesting an omission of an expert witness Blake Gopnik, a tenured art critic for the Washington Post and Newsweek, among others. He is also the author of Warhol, a 2020 biography of the Pop artist, and was quoted in a similar ongoing art copyright Supreme Court case regarding the late artist's portrait of Prince in which he used a photograph taken by Lynn Goldsmith, allegedly without permission. He also penned an article for The New York Times on the case.

The artist has been vocal on his social media channels about his refusal to back down from his artwork, the legal battle, and his right to exercise his First Amendment rights, particularly as an artist.

Ads

Hermes also stated during the ruling in February that Rothschild’s NFTs infringed upon their own plans to create them. The iconic French brand is known for its devotion to the arts witnessed in its Fondation d’enterprise Hermès, which supports various arts programs through four programs: an international performing arts group, French/US contemporary photography residencies, exhibit spaces in Europe and Asia, and its Artist Residency programs which collaborate with the ateliers. It’s akin to how the Hermès Éditeur scarves came to be. The special edition scarves were made using artwork from Josef Albers, Daniel Buren, Hiroshi Sugimoto, and Julio Le Parc.

Hermès isn’t alone as a luxury leader who supports the arts. Luxury, however, is particularly litigious when it comes to trademarks, thus choosing to depict one of the most iconic handbag designs ever to be sold commercially as art was also a decision that didn’t come without risk.