Hermes International et al v. Rothschild
Case Summary
On January 14, 2022, Hermès International and Hermès of Paris, Inc. (“Hermès” or “Plaintiffs”), represented by Gerald Joseph Ferguson of Baker & Hostetler LLP, filed an intellectual property lawsuit against Mason Rothschild (“Defendant”) seeking declaratory relief and injunctive relief, along with damages, for the alleged trademark infringement by Defendant. This case was filed in the United States District Court in the Southern District of New York.
In the complaint, Plaintiffs alleged that, “Defendant is a digital speculator who is seeking to get rich quick by appropriating the brand METABIRKINS for use in creating, marketing, selling, and facilitating the exchange of digital assets known as non-fungible tokens (“NFTs”). Defendant’s METABIRKINS brand simply rips off Hermès’ famous BIRKIN trademark by adding the generic prefix “meta” to the famous trademark BIRKIN. “Meta” and “metaverse” refer to virtual worlds and economies where digital assets such as NFTs can be sold and traded.”
Plaintiffs also alleged that, “Defendant has openly revealed his METABIRKINS business plan. He seeks to make his fortune by swapping out Hermès’ “real life” rights for “virtual rights”. As he has explained, Defendant is trying to “create the same kind of illusion that [the Birkin] has in real life as a digital commodity” and “Defendant has openly acknowledged that he elected to sell his NFTs as METABIRKINS because a BIRKIN handbag is a highly valuable asset in the physical world. Defendant has executed on his plan for replicating the physical world success of the BIRKIN bag in the “metaverse” through pervasive use of the mark METABIRKINS to brand all of his “metaverse” business activities. He identifies his collection of NFTs using the METABIRKINS trademark. He operates e-commerce stores for the sale of NFTs under the METABIRKINS trademark.”
Plaintiffs further alleged that, “Defendant’s adoption of the METABIRKINS trademark has brought him great financial success in a matter of weeks. There can be no doubt that this success arises from his confusing and dilutive use of Hermès’ famous trademarks” and “Defendant has infringed, continues to infringe, and threatens to further infringe the BIRKIN Mark by manufacturing, distributing and selling the unauthorized METABIRKINS NFTs. Defendant’s infringing activities constitute unauthorized public display and distribution of products in connection with the BIRKIN Mark and HERMÈS Marks.”
There are seven claims of relief laid down by Plaintiffs. The first claim is for alleged trademark infringement under 15 U.S.C. § 1114. The second claim is for alleged false designation of origin, false descriptions, and representations under 15 U.S.C. § 1125(a). The third claim is for alleged federal trademark dilution under 15 U.S.C. § 1125(c). The fourth claim is for alleged cybersquatting under the anti-cybersquatting consumer protection act under 15 U.S.C. § 1125(d). The fifth claim is for alleged injury to business reputation and dilution under New York Business Law § 360-1. The sixth claim is for alleged common law trademark infringement. The seventh claim is for alleged misappropriation and unfair competition under New York Common Law.
In the prayer for relief, Plaintiffs requested the court for declaratory relief and permanent injunctive relief, along with damages, including statutory damages of $100,000; all the profits together with three times the amount of damages assessed with prejudgement interest; reasonable attorneys’ and investigators’ fees, and any other relief the court deems just and proper together with the costs and disbursements which Hermès has incurred in connection with this action.
This case summary may not reflect the current position of the parties to this litigation or the status of this case. Sign up to view the latest case updates and court documents.
Case Details
-
Case Number:
1:22-CV-00384
-
Filing Date:
01/14/2022
-
Case Status:
Disposed - Other Disposed
-
Case Type:
Intellectual Property - Trademark
-
Court:
-
Courthouse:
Judge Details
Presiding Judge
Jed S. Rakoff
Party Details
Plaintiffs
Hermes International
Hermes of Paris, Inc.
Defendant
Mason Rothschild
Attorney/Law Firm Details
Plaintiff Attorneys
Deborah A. Wilcox
Jason S. Oliver
Kevin M Wallace
Oren J. Warshavsky
Megan Corrigan
Gerald Joseph Ferguson
Lisa Bollinger Gehman
Jessica H. Fernandez
Defendant Attorneys
Rebecca Tushnet
Christopher Jon Sprigman
Adam B. Oppenheim
Rhett Owen Millsaps, II
Ashley N Robinson
Mark P McKenna
Jonathan Andrew Harris
Court Documents
(#189) NOTICE of Filing Letter in Response to Defendant's Letter Re: Opinion in Yuga Labs, Inc. v. Ripps, et al. re: #188 Notice (Other). Document filed by Hermes International, Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 05/13/2023)
(#188) NOTICE of Letter re: Yuga Labs v. Ripps. Document filed by Mason Rothschild..(Millsaps, Rhett) (Entered: 05/12/2023)
Exhibit F - Bernstein LinkedIn Post
Exhibit E - 2023.02.01 Transcript (Dkt No. 153)
Exhibit D - 2023.01.31 Transcript (Dkt No. 149)
Exhibit C - 2023.02.02 Transcript (Dkt No. 155)
Exhibit B - 2023.02.06 Transcript (Dkt No. 159)
Main Document
(#183) MEMORANDUM OF LAW in Opposition re: #172 MOTION for Judgment as a Matter of Law or New Trial. . Document filed by Hermes International, Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 03/28/2023)
Exhibit AM - Tweet Regarding Fake MetaBirkins
Exhibit AB - Zora MetaBirkin Screenshot
Exhibit X - Rarible MetaBirkin Screenshots 2021-12-22
Exhibit O - Hermes Federally Registered Trademarks Chart
Exhibit N - Judicial Decisions in English
Exhibit L - Birkin Museum Exhibit
Exhibit G - Reuters Hermes Q2 2021 Sales
Exhibit E - MetaBirkin OpenSea Page
Exhibit A - Hermes Word Marks
Docket Entries
Docket(#189) NOTICE of Filing Letter in Response to Defendant's Letter Re: Opinion in Yuga Labs, Inc. v. Ripps, et al. re: #188 Notice (Other). Document filed by Hermes International, Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 05/13/2023)
[-] Read LessDocket(#188) NOTICE of Letter re: Yuga Labs v. Ripps. Document filed by Mason Rothschild..(Millsaps, Rhett) (Entered: 05/12/2023)
[-] Read LessDocket(#187) DECLARATION of Ashley N. Robinson in Support re: #172 MOTION for Judgment as a Matter of Law or New Trial.. Document filed by Mason Rothschild. (Attachments: #1 Exhibit A - 2023.02.03 Transcript (Dkt No. 157), #2 Exhibit B - 2023.02.06 Transcript (Dkt No. 159), #3 Exhibit C - 2023.02.02 Transcript (Dkt No. 155), #4 Exhibit D - 2023.01.31 Transcript (Dkt No. 149), #5 Exhibit E - 2023.02.01 Transcript (Dkt No. 153), #6 Exhibit F - Bernstein LinkedIn Post, #7 Exhibit G - New York Times Article, #8 Exhibit H - 2022.11.18 Transcript (Dkt No. 105), #9 Exhibit I - Kramer LinkedIn Comments, #10 Exhibit J - Kramer LinkedIn Comments).(Robinson, Ashley) (Entered: 04/04/2023)
[-] Read LessDocket(#186) REPLY MEMORANDUM OF LAW in Support re: #172 MOTION for Judgment as a Matter of Law or New Trial. . Document filed by Mason Rothschild..(Millsaps, Rhett) (Entered: 04/04/2023)
[-] Read LessDocket(#185) DECLARATION of Jessica H. Fernandez in Opposition re: #172 MOTION for Judgment as a Matter of Law or New Trial.. Document filed by Hermes International, Hermes of Paris, Inc.. (Attachments: #1 Exhibit 31- Plaintiffs Admitted Trial Exhibit 100, #2 Exhibit 32- Plaintiffs Admitted Trial Exhibit 193, #3 Exhibit 33- February 2, 2023 Trial Transcript, #4 Exhibit 34- Plaintiffs Admitted Trial Exhibit 242, #5 Exhibit 35- Plaintiffs Admitted Trial Exhibit 239, #6 Exhibit 36- Plaintiffs Admitted Trial Exhibit 146, #7 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #8 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #9 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #10 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #11 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #12 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #13 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #14 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #15 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #16 Exhibit 37- Plaintiffs Admitted Trial Exhibit 243, #17 Exhibit 38- Plaintiffs Admitted Trial Exhibit 224, #18 Exhibit 38- Plaintiffs Admitted Trial Exhibit 224, #19 Exhibit 38- Plaintiffs Admitted Trial Exhibit 224, #20 Exhibit 38- Plaintiffs Admitted Trial Exhibit 224, #21 Exhibit 39- Plaintiffs Admitted Trial Exhibit 225, #22 Exhibit 39- Plaintiffs Admitted Trial Exhibit 225, #23 Exhibit 39- Plaintiffs Admitted Trial Exhibit 225, #24 Exhibit 40- Plaintiffs Admitted Trial Exhibit 373, #25 Exhibit 40- Plaintiffs Admitted Trial Exhibit 373, #26 Exhibit 40- Plaintiffs Admitted Trial Exhibit 373, #27 Exhibit 40- Plaintiffs Admitted Trial Exhibit 373, #28 Exhibit 40- Plaintiffs Admitted Trial Exhibit 373, #29 Exhibit 40- Plaintiffs Admitted Trial Exhibit 373, #30 Exhibit 41- Plaintiffs Admitted Trial Exhibit 305, #31 Exhibit 42- Plaintiffs Admitted Trial Exhibit 306, #32 Exhibit 43- January 30, 2023 Trial Transcript, #33 Exhibit 44- Plaintiffs Admitted Trial Exhibit 67, #34 Exhibit 45- Plaintiffs Admitted Trial Exhibit 83, #35 Exhibit 46- Defendants Admitted Trial Exhibit 525, #36 Exhibit 47- Plaintiffs Admitted Trial Exhibit 232, #37 Exhibit 48- Plaintiffs Admitted Trial Exhibit 238, #38 Exhibit 49- Plaintiffs Admitted Trial Exhibit 387, #39 Exhibit 50- Plaintiffs Admitted Trial Exhibit 388, #40 Exhibit 51- Plaintiffs Admitted Trial Exhibit 389, #41 Exhibit 52- Plaintiffs Admitted Trial Exhibit 390, #42 Exhibit 53- Plaintiffs Admitted Trial Exhibit 20, #43 Exhibit 54- Plaintiffs Admitted Trial Exhibit 134, #44 Exhibit 55- Plaintiffs Admitted Trial Exhibit 144, #45 Exhibit 56- September 23, 2022 Deposition of Dr. Blake Gopnik).(Fernandez, Jessica) (Entered: 03/29/2023)
[-] Read LessDocket(#184) DECLARATION of Jessica H. Fernandez in Opposition re: #172 MOTION for Judgment as a Matter of Law or New Trial.. Document filed by Hermes International, Hermes of Paris, Inc.. (Attachments: #1 Exhibit 1- February 6, 2023 Trial Transcript, #2 Exhibit 2- February 3, 2023 Trial Transcript, #3 Exhibit 3- February 7, 2023 Trial Transcript, #4 Exhibit 4- LinkedIn Post, #5 Exhibit 5- Plaintiffs Admitted Trial Exhibit 323, #6 Exhibit 6- Screenshot of WWD, #7 Exhibit 7- February 8, 2023 Tweet, #8 Exhibit 8- Sprigman Reply Tweet to Rothschild Tweet, #9 Exhibit 9- Washington Post Opinion, #10 Exhibit 10- Plaintiffs Admitted Trial Exhibit 5, #11 Exhibit 11- Plaintiffs Admitted Trial Exhibit 6, #12 Exhibit 12- January 31, 2023 Trial Transcript, #13 Exhibit 13- January 11, 2021 Deposition Testimony of Robert Chavez, #14 Exhibit 14- Plaintiffs Admitted Trial Exhibit 255, #15 Exhibit 15- Plaintiffs Admitted Trial Exhibit 8, #16 Exhibit 15- Plaintiffs Admitted Trial Exhibit 8, #17 Exhibit 15- Plaintiffs Admitted Trial Exhibit 8, #18 Exhibit 15- Plaintiffs Admitted Trial Exhibit 8, #19 Exhibit 15- Plaintiffs Admitted Trial Exhibit 8, #20 Exhibit 16- Plaintiffs Admitted Trial Exhibit 16, #21 Exhibit 17- Plaintiffs Admitted Trial Exhibit 10, #22 Exhibit 18- Plaintiffs Admitted Trial Exhibit 9, #23 Exhibit 19- February 1, 2023 Trial Transcript, #24 Exhibit 20- Plaintiffs Admitted Trial Exhibit 272, #25 Exhibit 21- Plaintiffs Admitted Trial Exhibit 227, #26 Exhibit 22- Plaintiffs Admitted Trial Exhibit 308, #27 Exhibit 22- Plaintiffs Admitted Trial Exhibit 308, #28 Exhibit 22- Plaintiffs Admitted Trial Exhibit 308, #29 Exhibit 23- Defendants Admitted Trial Exhibit 620, #30 Exhibit 24- Plaintiffs Admitted Trial Exhibit 45, #31 Exhibit 25- Plaintiffs Admitted Trial Exhibit 380,, #32 Exhibit 26- Plaintiffs Admitted Trial Exhibit 254, #33 Exhibit 27- Plaintiffs Admitted Trial Exhibit 315, #34 Exhibit 28- Plaintiffs Admitted Trial Exhibit 253, #35 Exhibit 29- Plaintiffs Admitted Trial Exhibit 309, #36 Exhibit 30- Plaintiffs Admitted Trial Exhibit 279).(Fernandez, Jessica) (Entered: 03/29/2023)
[-] Read LessDocket(#183) MEMORANDUM OF LAW in Opposition re: #172 MOTION for Judgment as a Matter of Law or New Trial. . Document filed by Hermes International, Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 03/28/2023)
[-] Read LessDocket(#182) DECLARATION of Jessica H. Fernandez in Support re: #165 MOTION for Permanent Injunction .. Document filed by Hermes International, Hermes of Paris, Inc.. (Attachments: #1 Exhibit 61- Plaintiff's Trial Exhibit 21, #2 Exhibit 62- February 1, 2023 Trial Transcript Excerpts, #3 Exhibit 63- February 6, 2023 Trial Transcript Excerpts, #4 Exhibit 64- January 31, 2023 Trial Transcript Excerpts., #5 Exhibit 65- February 3, 2023 Trial Transcript Excerpts, #6 Exhibit 66- January 30, 2023 Trial Transcript Excerpts, #7 Exhibit 67- Defendant's Trial Exhibit 620, #8 Exhibit 68- February 2, 2023 Trial Transcript Excerpts).(Fernandez, Jessica) (Entered: 03/24/2023)
[-] Read LessDocket(#181) DECLARATION of Dr. Bruce R. Isaacson in Support re: #165 MOTION for Permanent Injunction .. Document filed by Hermes International, Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 03/24/2023)
[-] Read LessDocket(#180) REPLY MEMORANDUM OF LAW in Support re: #165 MOTION for Permanent Injunction . . Document filed by Hermes International, Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 03/24/2023)
[-] Read LessDocket(#7) ELECTRONIC SUMMONS ISSUED as to Mason Rothschild. (vf) (Entered: 01/18/2022)
[-] Read LessDocketCase Designated ECF. (vf) (Entered: 01/18/2022)
[-] Read LessDocketMagistrate Judge Debra C. Freeman is so designated. Pursuant to 28 U.S.C. Section 636(c) and Fed. R. Civ. P. 73(b)(1) parties are notified that they may consent to proceed before a United States Magistrate Judge. Parties who wish to consent may access the necessary form at the following link: #https://nysd.uscourts.gov/sites/default/files/2018-06/AO-3.pdf. (vf) (Entered: 01/18/2022)
[-] Read LessDocketCASE OPENING INITIAL ASSIGNMENT NOTICE: The above-entitled action is assigned to Judge Alison J. Nathan. Please download and review the Individual Practices of the assigned District Judge, located at #https://nysd.uscourts.gov/judges/district-judges. Attorneys are responsible for providing courtesy copies to judges where their Individual Practices require such. Please download and review the ECF Rules and Instructions, located at #https://nysd.uscourts.gov/rules/ecf-related-instructions..(vf) (Entered: 01/18/2022)
[-] Read LessDocket(#6) RULE 7.1 CORPORATE DISCLOSURE STATEMENT. Identifying Corporate Parent Hermes International for Hermes of Paris, Inc.. Document filed by Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 01/14/2022)
[-] Read LessDocket(#5) RULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent. Document filed by Hermes International..(Ferguson, Gerald) (Entered: 01/14/2022)
[-] Read LessDocket(#4) REQUEST FOR ISSUANCE OF SUMMONS as to Mason Rothschild, re: #1 Complaint,,,,,,,,,. Document filed by Hermes International, Hermes of Paris, Inc...(Ferguson, Gerald) (Entered: 01/14/2022)
[-] Read LessDocket(#3) CIVIL COVER SHEET filed..(Ferguson, Gerald) (Entered: 01/14/2022)
[-] Read LessDocket(#2) AO 120 FORM TRADEMARK - NOTICE OF SUBMISSION BY ATTORNEY. AO 120 Form Patent/Trademark for case opening submitted to court for review..(Ferguson, Gerald) (Entered: 01/14/2022)
[-] Read LessDocket(#1) COMPLAINT against Mason Rothschild. (Filing Fee $ 402.00, Receipt Number ANYSDC-25591379)Document filed by Hermes International, Hermes of Paris, Inc.. (Attachments: #1 Exhibit A - Hermes Word Marks, #2 Exhibit B - Image of Birkin, #3 Exhibit C - BIRKIN Certificate of Registration, #4 Exhibit D - BIRKIN Design Certificate of Registration, #5 Exhibit E - MetaBirkin OpenSea Page, #6 Exhibit F - CNN Article Re Birkin bags hit record prices even during COVID, #7 Exhibit G - Reuters Hermes Q2 2021 Sales, #8 Exhibit H - USA_HARPERSBAZAAR_Mighty Birkin, #9 Exhibit I - US Press, #10 Exhibit J - TV and Movies featuring the Birkin, #11 Exhibit K - Vanity Fair Article, #12 Exhibit L - Birkin Museum Exhibit, #13 Exhibit M - Times Article_Better Investment Than Gold, #14 Exhibit N - Judicial Decisions in English, #15 Exhibit O - Hermes Federally Registered Trademarks Chart, #16 Exhibit P - MetaBirkin Website on December 1 (No Disclaimer), #17 Exhibit Q - Image of Baby Birkin, #18 Exhibit R - Baby Birkin Basic Space Page, #19 Exhibit S - Image of MetaBirkins, #20 Exhibit T - MetaBirkin Website - Not Your Mother's Birkin Capture, #21 Exhibit U - MetaBirkin Website - Not Your Mother's Birkin (Just Birkin) Capture, #22 Exhibit V - MetaBirkins.com 2021-12-20 (With Disclaimer & Link to OpenSea), #23 Exhibit W - MetaBirkin Website, #24 Exhibit X - Rarible MetaBirkin Screenshots 2021-12-22, #25 Exhibit Y - Rarible Individual NFT Listing, #26 Exhibit Z - LooksRare Tweet, #27 Exhibit AA - Looksrare MetaBirkin Screenshot, #28 Exhibit AB - Zora MetaBirkin Screenshot, #29 Exhibit AC - MetaBirkins Website 2022-01-14, #30 Exhibit AD - Rothschild's Build a MetaBirkin Discord Post, #31 Exhibit AE - MetaBirkin Instagram Page As of 1-10-21, #32 Exhibit AF - MetaBirkin Instagram Post Re #NotYourMothersBirkin, #33 Exhibit AG - MetaBirkin Twitter Page, #34 Exhibit AH - Discord - Rothschild Messages to Followers About Rarible and Decentralized Exchange 2021-12-21, #35 Exhibit AI - Highsnobiety Baby Birkin Article, #36 Exhibit AJ - 2021-12-06 Yahoo Finance Rothschild Interview, #37 Exhibit AK - Letter to Rothschild_2021-12-16, #38 Exhibit AL - 2021-12-16 Email to OpenSea Re Rothschild, #39 Exhibit AM - Tweet Regarding Fake MetaBirkins).(Ferguson, Gerald) (Entered: 01/14/2022)
[-] Read Less
Dig Deeper
Get Deeper Insights on Court Cases