Trial between Hermes and NFT Artist Mason Rothschild set to go ahead

The trademark infringement trial between French luxury company Hermès and digital artist Mason Rothschild is scheduled to begin on January 30 in a federal court in Manhattan. Both parties allege that the other infringed on their respective trademarks.

Because the nonfungible token (NFT) artist was marketing and selling MetaBirkins, a series of NFTs that was alleged to be inspired by the luxury brand’s Birkin bags, the luxury company accused the NFT artist of infringing on its trademark.

On January 14, 2022, Hermès lodged a complaint against Mason Rothschild in the United States District Court for the Southern District of New York, alleging that the artist had refused to stop selling his NFT collection. This event marked the beginning of the trial as well as the related lawsuit that was filed at the same time.

According to papers that were submitted to the court on January 23, Hermès is arguing that the collection has made an illegal use of the Birkin trademark and may have caused clients to believe that the premium brand is affiliated with the initiative.

In the meanwhile, the court documents disclose that Rothschild thinks his work is protected under the First Amendment, which places no restrictions on free speech and prohibits censorship of any kind.

In the days leading up to the trial, several attorneys specialising in intellectual property law and other areas of the law have offered their opinions, stressing that the case may have repercussions for the NFT business.

An associate at the law firm Michael Best & Friedrich LLP named Laura Lamansky referred to the case as a “momentous turning point for Web3 and digital products” in an article that was published on January 18 and discussed the trial as well as its potential repercussions for the future of the NFT business.

The issue that has to be answered is, to what degree are trademarks from the physical world enforceable in the digital realm? “We will be keeping a close eye on this case to see how we can most effectively strengthen rights in the digital world,” she added.

“It will hopefully shed some light on how artwork and the First Amendment interact with consumer goods and NFTs and how far a brand’s rights in its trademarks or products extend in the digital space,” added Lamansky. “It will also hopefully shed some light on how a brand’s rights in its trademarks or products extend in the physical space.”

Michael Kasdan, a lawyer who specialises in blockchain and technology, has been keeping up with the case as well, although he does not seem to believe the outcome will be very important.

“It’s only going to be one district court case data point in the end, but it’s certainly going to be an intriguing one,” he added.

Companies and brands have started to enforce stricter policies on non-fungible token (NFT) projects, which they believe violate copyright, intellectual property, and trademark laws.

StockX was accused of committing trademark infringement on February 4, 2022, when Nike filed a lawsuit against the online reseller for the purported creation of NFTs that were modelled after Nike’s shoes.

After a base-layer blockchain provider, Secret Network, announced the auction of “uncut screenplay scenes” from Tarantino’s 1994 film Pulp Fiction as NFTs, film director Quentin Tarantino settled a lawsuit filed by Miramax in September 2022. The lawsuit had been filed after Secret Network announced the auction.


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‘Wave of litigation’ to hit NFT space as copyright issues abound

Ownership is one of the most critical aspects of nonfungible tokens (NFT). They are a representation of the evolution of execution and ownership of art, content, music, in-game assets, etc., since they are digital assets with distinctive identities that are verifiable on a blockchain network.

However, they have also created a new dimension of discussion about the interaction and grey area around copyright, intellectual property (IP) and trademark laws.

In a recent highly publicized fiasco in the cryptoverse, crypto decentralized autonomous organization (DAO) Spice DAO was mocked for believing that the ownership of a copy of the unpublished manuscript of the film Dune granted them its copyrights as well. The DAO intended to produce an “original animated series” inspired by the book to be sold to a streaming service for which it would require copyrights. The book was won at a Christie’s auction in November last year for over $3 million.

In this case, copyright laws dictate that the copyright is valid throughout the lifetime of the creators and even 70 years after their death which entails that the DAO cannot make the animated series without the permission of the living co-creator, Alejandro Jodorowsky. Cointelegraph discussed this incident with Andrew Rossow, a technology attorney and Ohio law professor, who said:

“The Spice DAO and Dune fiasco was a landmark in its own right that sends a very powerful message to everyone involved in the NFT space — creator or owner. The $3-million mistake that was made proved that intellectual property’s dominion in digital fine art is essential to its success and longevity.”

While it might not be a secret that the ownership of an NFT doesn’t necessarily mean that the underlying copyright of the work has been transferred to the owner, it doesn’t seem evident to all market participants. Rossow explained that copyright law affords six “bundles of rights” or exclusive rights to a creator, which collectively establish their copyright. The first four rights are crucial to NFTs right now — the right to reproduce the work, the right to create derivative works, the distribution right, and the public performance rights.

Marie Tatibouet, chief marketing officer of cryptocurrency exchange, spoke with Cointelegraph about the Dune fiasco, noting that anyone who did the proper research and due diligence would’ve known that the sale of a book’s copy had no copyrights attached to it. She said, “There still seems to be a wider misconception around what exactly NFTs are and what’s included when one purchases or trades an NFT in the space. As the industry develops, so will educational resources and a wider understanding of the market.”

Lawsuits begin to pour in

As things now stand, brands and companies have begun to crack down against NFT projects that violate copyright, IPs and trademarks. On Feb. 4, Nike filed a lawsuit against StockX for trademark infringement on Nike sneaker NFTs. The sneaker company has lodged a 50-page long complaint that claims the reseller has sold nearly 500 Nike brand sneaker NFTs impacting Nike’s reputation and legitimacy. Additionally, the shoemaker has accused StockX of selling the NFT sneakers at inflated prices amid “murky terms of purchase and ownership.”

Even French luxury fashion house Hermes has recently had a legal confrontation with Mason Rothschild, creator of Hermes Birkin bag-inspired NFTs MetaBirkins. Hermes mentioned in its complaint, the “defendant’s MetaBirkins brand simply rips off Hermès’ famous Birkin trademark by adding the generic prefix ‘meta’ to the famous trademark Birkin.” In response, the creator compared himself to Andy Warhol painting Campbell soup cans in that he is making art from a well-known commercial image.

Jeff Gluck, CEO of CXIP Labs — an NFT minting platform — discussed the incoming lawsuits with Cointelegraph. Gluck is also an IP and copyrights lawyer with over 14 years of experience in the legislative domain. He stated:

“There are dozens of artists preparing lawsuits against OpenSea for selling infringing NFTs. These examples are a sneak preview of a wave of litigation heading towards the space. It’s both good and bad in that it discourages creativity and growth in some ways, but it’s beneficial because it will ultimately help provide some guidelines in terms of clear legal parameters and guidelines for the space.”

Gluck further pointed out that one of the biggest problems NFT marketplaces are facing right now is that if they mint NFTs for their users and/or provide any level of curation, they are not shielded by the Digital Millennium Copyright Act (DMCA) and thus can be sued directly for copyright infringement by creators. The DMCA was passed in 1998 to implement the 1996 World Intellectual Property Organization’s Copyright Treaty and Performances and Phonograms Treaty. In part, it creates limitations on the liability of online service providers for copyright infringement.

Rossow believes that is an essential requirement for any NFT creator to highlight the copyright, trademark and IP implications of the NFTs they launch. He said, “The smart contract behind an NFT is what governs the rights on how it can be used. It would also make sense that the creator(s) behind any NFT project are crystal clear to their audience before minting on what rights they will have with the NFT once they mint and purchase it.”

Blockchain and copyright laws

The NFT industry has grown faster than even its participants could have imagined. The market sales surpassed $40 billion in 2021 just on the Ethereum blockchain. A recent NFT market report from Chainalysis found that the weekly total cryptocurrency value and average value per transaction have grown hand-in-hand from January to October in 2021. The prime reason for this growth is the hype that has surrounded these assets for the last two years from minting platforms, games, marketplaces, exchanges and others.

Related: From art to gaming: The biggest NFT trends of 2021

As a by-product of this high supply and demand, there are a lot of scams, hacks and other intentional property law violations that have been become more frequent. Tatibouet elaborated on this phenomenon, stating, “Considering many platforms have made minting NFTs quick and easy, it’s also made it possible for those with malicious intent to produce and sell NFTs of copyrighted items. Platforms are slowly starting to adapt to this; however, it may remain to be an issue for the foreseeable future.”

She also noted that platforms will need to adapt quickly and introduce barriers to those looking to abuse the system since they are liable to face legal repercussions, being the direct link between consumers and creators. As multinational companies that have large intellectual property libraries that are being abused, the NFT industry can expect legal issues down the road.

However, NFTs are also a relatively new innovation compared to the existing prevalent copyright, IP and trademark laws, which could be an opportunity to amend the law to account for this new technology. Varun Sethi, founder of blockchain legal services firm Blockchain Lawyer, told Cointelegraph that copyright laws need to recognize the tokenization of digital assets as a revolutionary and evolving legal option and accept the NFTs owner as the copyright owner.

However, Sethi noted the obstacles involved, saying, “There are challenges pertaining to updating of the registered owner as per copyright record plus fragmentation of ownership of a single digital art into multiple NFT owners plus payment of filing fees for becoming actual owner and not just an ostensible owner.”

Sethi foresees even more ownership issues when NFTs change hands unless the law is amended so that all NFT sales are recorded as ownership swapping as per the copyright office’s records.

Even though NFTs as a whole fall under copyright and IP laws of the countries in which they are issued, there are NFT projects that are now aiming to solve the grey area around this legal concern and offer copyrights for NFTs as well. CXIP Labs is such an example wherein copyright registrations are included in the minting process itself.

A platform called GuardianLink is using its proprietary artificial intelligence technology to monitor the web for any duplicate, rip-offs and copy-cat NFTs of the creators using their platform. This enables both creators and collections to protect their NFT assets.

The cryptocurrency community is known to adapt to changes fairly quickly due to the nascent nature of the industry and the technology. Thus, as the legal issues around NFTs develop and reveal more about what modifications need to be made to the prevalent structure, there will also be protocols that adapt.