About Intellectual Property IP Training Respect for IP IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships AI Tools & Services The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars IP Enforcement WIPO ALERT Raising Awareness World IP Day WIPO Magazine Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Finance Intangible Assets Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA UPOV e-PVP Administration UPOV e-PVP DUS Exchange Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Webcast WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO Translate Speech-to-Text Classification Assistant Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight
Arabic English Spanish French Russian Chinese
Laws Treaties Judgments Browse By Jurisdiction

WIPO Lex

WIPOLEX038-j

Back

United States District Court of the Southern District of New York [2023]: Hermes Int'l v. Rothschild, No. 22-CV-384-JSR, 2023 WL 1458126 (S.D.N.Y. Feb. 2, 2023)

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

 

Session 5: Generative Artificial Intelligence, the Metaverse and Intellectual Property Infringement

 

United States District Court of the Southern District of New York [2023]: Hermes Int'l v. Rothschild, No. 22-CV-384-JSR, 2023 WL 1458126 (S.D.N.Y. Feb. 2, 2023).

 

Date of judgment: February 2, 2023

Issuing authority: U.S. District Court for the Southern District of New York

Level of the issuing authority: First Instance (Trial Court)

Type of procedure: Judicial (Civin( �/span>

Subject matter: Trademarks; Enforcement of IP and Related Laws

Plaintiff: Hermès Int’l

Defendant: Mason Rothschild

Keywords: First Amendment, Trademark infringement, Non-fungible tokens (NFTs), Blockchain, Intellectual property

 

Basic facts: Hermès, the luxury fashion brand, designs and produces the Birkin handbag.  Mason Rothschild created a collection of digital “MetaBirkin” bags depicting the Birkin handbags and used NFTs (digital records of ownership) to sell the digital images to individual buyers.  Hermès sued Rothschild for, among other claims, trademark infringement.  Of note, one of Rothschild’s primary defenses was that he is entitled to protection under free speech principles of the U.S. First Amendment. 

 

Held: A judge in the U.S. District Court for the Southern District of New York denied summary judgment due to factual disputes and held that Rothschild’s MetaBirkins “could constitute a form of artistic expression”, so the more protective legal test for U.S. First Amendment free speech protection applied to evaluate whether digital images of fur-covered Birkin handbags underlying the NFTs infringed Hermès’ trademark. 

 

Note: There are trial courts that have held the opposite, depending on the facts.  In Yuga Labs, Inc. v. Ripps, No. CV 22-4355-JFW(JEMX), 2023 WL 3316748 (C.D. Cal. Apr. 21, 2023), a federal trial court in California denied summary judgment in part and held that that the U.S. First Amendment free speech protection defense does not apply, because Ripps’s creation of NFTs pointing to the same images at Yuga’s NFTs is not expressive artistic work as required.

 

Relevant holdings in relation to generative artificial intelligence, the Metaverse and intellectual property infringement: The U.S. District Court for the Southern District of New York concluded that the so-called Rogers test (established by the case of Rogers v Grimaldi) applies to Hermès’ claims because, on the pleadings, Rothschild’s MetaBirkins “could constitute a form of artistic expression.”  The Rogers test affords heightened protection to alleged trademark infringements when a title with at least some artistic relevance is not explicitly misleading as to source or content.

 

In holding that the Rogers test governs the case, the District Court found that Rothschild had identified admissible evidence supporting his assertion that his use of Hermès’ mark functioned primarily as part of an artistically expressive project, not as a source identifier that would mislead consumers into thinking that Hermès originated or otherwise endorsed the MetaBirkins collection.

 

Relevant legislation:

Trademark Act of 1946 (Lanham Act), 15 U.S.C. § 1125(a) (trademark infringement requirements)