Artists Unite: The Amicus Brief’s Role in the MetaBirkins Legal Battle

Last February, luxury fashion brand Hermès won its trademark infringement lawsuit against street artist Mason Rothschild in the case of Hermes v. Mason Rothschild and the controversial MetaBirkins project, a collection of 100 digital NFT purses covered in faux fur that bore a striking resemblance to the French fashion house’s iconic Birkin bags.

Consequently, Rothschild was ordered by the nine-member New York jury to pay Hermès $110,000 for infringing on the luxury brand’s trademark, in addition to $23,000 for cybersquatting and using a domain name that was also confusingly similar to Hermès.

The latest update in the case, however, comes in the form of an amicus brief, submitted to the Second Circuit Court of Appeals on November 13 by a coalition group led by MSCHF and including CTHDRL, Alfred Steiner, Jack Butcher, and the Authors Alliance, filed its amicus brief on November 13 to the Second Circuit Court of Appeals.

In this case, the amicus brief serves as an aid for the Court’s consideration of Rothschild’s appeal, given the heavy impact its decision would have on many parties beyond just Hermès and Rothschild. The MetaBirkins project, which reimagines Hermès’ iconic Birkin bags as digital art, has sparked a contentious debate about the intersection of art, commerce, and intellectual property in the age of digital media.

Last week, Rothschild filed his opening brief in his appeal, arguing that the district court erred from the outset of the case by failing to apply the traditional Rogers test and its two objective factors to dismiss Hermès’ complaint. 

His brief also highlights significant errors made by the district court at trial, including the district court’s flawed jury instructions, which failed to implement Rogers, and the district court’s exclusion of the testimony of noted art critic and historian Dr. Blake Gopnik, which was further explained in the coalition’s amicus brief.

A Call to Reverse What Could Be a ‘Chilling’ Effect On Artists

It’s no surprise that the Hermès/Rothschild case involving MetaBirkins has seen a formidable coalition rally in Rothschild’s defense. Naturally, the coalition fears a chilling effect on artistic expression if the trial court’s ruling against Rothschild stands, citing how the mishandling of Rothschild’s case could impact future artists — specifically the First Amendment right to engage in cultural commentary and criticism. 

This legal contention is not merely about Rothschild’s MetaBirkins but represents a crucial juncture for trademark law and First Amendment rights when it comes to digital artwork.

“This case transcends MetaBirkins. It’s pivotal for the future of artistic freedom, ensuring that cutting-edge creative expression isn’t hindered by archaic legal interpretations,” Rothschild asserts in a press release shared with nft now, emphasizing the broader implications of this legal battle.

In the 41-page amicus brief shared with nft now, the coalition argues for the necessity of a clear First Amendment filter in trademark cases involving expressive works – specifically, the vital role that the 1989 U.S. Supreme Court (SCOTUS) decision Rogers v. Grimaldi continues to set out with its “First Amendment exit ramps” for trademark infringement analysis.

1. Cultural Commentary and Critique Are Vital Components of Discourse

Just as creators borrow from brands to communicate, companies also borrow from creators to develop their iconic trademarks and add their own sales pitches to leverage meaningful symbols and icons.

The coalition argues that the ubiquity of today’s most iconic brands requires that artists like Rothschild remain able to reference them in their work – regardless of whether or not they first obtain permission from trademark owners.

They referenced Andy Warhol and how he didn’t obtain permission from the Campbell Soup Company to feature its brand in his artwork – yet, Warhol’s work still stands as a powerful and prominent example of an artist creating commentary on contemporary culture by referencing established brands. 

In the case at bar, the court will need to clarify the scope of protection in applying the Rogers test correctly to Rothschild’s work. 

2. Future Trademark Infringement Analysis Must Include First Amendment Filters

The Second Circuit’s long-standing precedent, set forth by Rogers, remains vital to protect the interests of today’s artists and creators – including those immersed in digital works. 

And in the case of Rothschild, the coalition argues that the district court overlooked those protections and this Court now has the opportunity to correct it before additional harm is done to the overall industry.

Under Rogers, the court stated that the Lanham Act “should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.

3. The SCOTUS Decision in Jack Daniel’s Emphasized ‘Rogers’ Test

The brief also responds to the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, which upheld the Rogers test, emphasizing its role in bypassing the complex “likelihood of confusion” test and enabling easier dismissal of infringement claims against artistic works.

The SCOTUS held that Rogers does not apply when an alleged infringer uses a trademark or a designation of source for the infringer’s own goods – e.g. using a protected trademark as a trademark.

4. The Exclusion of Expert Testimony

Rothschild’s appeal highlights significant errors at the trial level, including flawed jury instructions and the exclusion of expert testimony from art critic Dr. Blake Gopnik.

The appeal also notes the confusion apparent in the jury’s deliberation process and misconceptions about artistic precedent, as evidenced by the jury forewoman’s social media comments.

The outcome of this case will set a precedent not only for Rothschild and his MetaBirkins project but also for the broader art world. It challenges us to reconsider our understanding of intellectual property rights in an era where art, commerce, and digital technology intersect more intimately than ever before.

“The ongoing case is set to establish a crucial precedent for trademark law and First Amendment rights in the digital age, raising fundamental questions about artistic freedom, intellectual property, and the rights of artists working in both emerging and traditional media who engage with the brands that saturate our culture,” Rothschild said.