BakerHostetler Secures Victory for Paris Fashion House Hermès International in Trademark Case involving NFTs

News / February 20, 2023

NEW YORK – Feb. 20, 2023 – A team of BakerHostetler lawyers secured a trial win for client Hermès International in a trademark infringement case against designer Mason Rothschild over the production and sale of MetaBirkins’ non-fungible tokens.

The case – heard in the U.S. District Court for the Southern District of New York before Judge Jed Rakoff – hinged on the claims that the NFTs infringed Hermès’ marks protecting its Birkin handbags both in name and appearance.

The Wall Street Journal described the trial as “… was one of the first to reckon with how NFTs intersect with intellectual-property law and free-speech protections for art.” It called the verdict “…a boost for companies seeking to protect their trademarks in the digital realm.” Due this win, on Feb. 10 BakerHostetler was named first runner-up Litigator of the Week by Litigation Daily.

The BakerHostetler team representing Hermès at trial included Oren Warshavsky, Gerald Ferguson, Deborah Wilcox, Heather McDonald, Lisa Gehman, Jason Oliver, Jessica Fernandez, Francesca Rogo and Megan Corrigan.

The jury deliberated for three days before providing a ruling in favor of Hermès. On Feb. 8, they delivered a verdict of liability for trademark infringement, trademark dilution and for unlawfully cybersquatting on the domain name. The jury also found that the First Amendment did not insulate the defendant from liability for his conduct.

As a result, Rothschild must pay $110,000 of profit and resale commissions it received from selling the NFTs and also pay $23,000 in damages for cybersquatting.