Did the Court Bag the MetaBirkin Case?

The jury hearing Hermes v. Rothschild found the artist's 'MetaBirkin' NFTs constitutes trademark infringement and trademark dilution. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: The jury hearing Hermes v Rothschild found Rothschild liable for trademark infringement and trademark dilution.  The matter went to trial after the judge dismissed both Hermes and Rothschild’s motions for summary judgment.  Should the court have sent the matter to the jury and what may be the basis for an appeal. We are going to discuss this case on the next installment of the briefing Scott: Mason Rothschild is an artist who has created a series of digital artworks called MetaBirkins. The artist claims that each work comment on Hermès’ “Birkin” handbags. is a unique, fanciful interpretation of a Birkin bag. Rothschild claims that the depiction of each bag as fur covered, Comments on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags.  He has over 100 pieces as part of the collection and has sold over 1.1 million. Josh: Hermes filed suit in January 2022 alleging trademark infringement and trademark dilution.  Rothschild moved to dismiss, relying heavily on Rogers v Grimaldi. The court dismissed Rothschild’s motion because the amended complaint included sufficient allegations that Rothschild entirely intended to associate the MetaBirkins mark with the popularity and goodwill of the Hermes Birkin mark rather than intending an artistic association Scott: Shortly thereafter both parties moved for summary judgment.  Although the court found that the Hermes’ claims should be analyzed under the Rogers test, the court found that a genuine issue of material fact remained as to whether under the Rogers test Rothchild’s NTFs infringe and/or dilute Hermes’ trademarks. Josh: The Rogers court held that where the defendant’s product is artistic or expressive, the Lanham Act must be interpreted “narrowly in order to avoid suppressing protected speech under the First Amendment.”  The two parts of the Rogers test are artistic relevancy and whether the use of the mark is explicitly misleading. Scott: Citing to a 2012 Southern District of NY case, Louis Vuitton Mallatier S.A. v. Warner Bros. Entm't Inc., The artistic relevance prong of the Rogers test "ensures that the defendant intended an artistic – i.e., non-commercial association with the plaintiff's mark, as opposed to one in which the defendant intends to associate with the mark to exploit the mark's popularity and good will. . Josh: Under Rogers, however, a showing of artistic relevance is easily satisfied: it is met "unless the [use of the mark] has no artistic relevance to the underlying work whatsoever," and was instead chosen merely "to exploit the publicity value of [the plaintiff's mark or brand]." Scott: This court, in denying the cross motions for summary judgment said that “there is a genuine factual dispute as to whether Rothschild's decision to center his work around the Birkin bag stemmed from genuine artistic expression or, rather, from an unlawful intent to cash in on a highly exclusive and uniquely valuable brand name” Josh: In the courts order it cited to Rothschild's comments to investors that "he doesn't think people realize how much you can get away with in art by saying 'in the style of'" and that he was "in the rare position to bully a multi-billion-dollar corporation" as being pro...