Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 1 of 26
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF NEW YORK
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`HERMÈS INTERNATIONAL and
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`HERMÈS OF PARIS, INC.,
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`Plaintiffs,
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`-against-
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`MASON ROTHSCHILD,
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`Defendant.
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`JED S. RAKOFF, U.S.D.J.:
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`22-cv-384 (JSR)
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`OPINION AND ORDER
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`By Order dated December 30, 2022, the Court denied the
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`parties’ cross motions for summary judgment, with Opinion to
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`follow. Here is that Opinion.
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`In their cross-motions for summary judgment, plaintiffs
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`Hermès International and Hermès of Paris, Inc. (collectively
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`“Hermès”) and defendant Mason Rothschild ask the Court to determine
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`two questions. First, whether the digital images underlying the
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`non-fungible tokens (“NFTs”) produced and sold by defendant Mason
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`Rothschild depicting fur-covered Birkin handbags -- so-called
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`“MetaBirkins” -- should be evaluated under the Rogers v. Grimaldi
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`test for artistic works or the Gruner + Jahr test for general
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`trademark infringement. Second, whether, under whichever test is
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`applied, the MetaBirkins NFT images or related products infringe
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`1
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 2 of 26
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`and/or dilute Hermès’ trademarks pertaining to its Birkin handbag.1
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`As to the first, threshold question, the Court reaffirms the
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`determination it made in its earlier Order of May 18, 2022 that
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`the plaintiffs’ claims should be assessed under the two-part test
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`articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989),
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`for evaluating trademark infringement in artistic works. Dkt. 77,
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`Order Denying Mot. to Dismiss (“Mot. Dismiss Order”) at 11. As to
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`the second question, the Court finds that there remain genuine
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`issues of material fact that preclude summary judgment.
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`I.
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`Factual Background2
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`Hermès is a luxury fashion brand known, among other things,
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`for designing, producing, and marketing the “iconic” Birkin. Dkt.
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`74, Plfs.’ Statement of Material Facts (“Plfs. SOMF”) ¶ 2. Since
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`1986, Hermès has sold over $1 billion worth of these handbags in
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`the United States, including over $100 million dollars’ worth in
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`the past ten years alone. Dkt. 69, Declaration of Nicolas Martin
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`(“Martin Decl.”) ¶ 10. Individual Birkin bags regularly sell for
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`1 The plaintiffs own trademark rights in the “Birkin”
`mark -- that is, the name of the bag itself -- and trade dress
`rights in the design of the Birkin handbag. Am. Compl. ¶¶ 34–36.
`Plaintiffs also bring cyber-squatting and unfair competition
`claims. See generally id.
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`2 The following facts are taken from the parties’ Rule 56.1
`statements and supporting materials. Throughout this Opinion, the
`Court construes the facts in dispute most favorably to the party
`not moving for summary judgment with respect to whichever motion
`the Court is analyzing.
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`2
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 3 of 26
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`tens of thousands of dollars, with one fetching hundreds of
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`thousands of dollars at Christie’s, an art auction house. Plfs.’
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`SOMF ¶ 58. As both parties recognize, the Birkin bag has also come
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`to occupy a place of cultural importance as a symbol of wealth and
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`exclusivity. Cf. Dkt. 84, Def’s Counterstatement to Plfs. SOMF ¶
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`3.
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`Defendant
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`Mason
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`Rothschild3
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`is
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`a
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`self-described
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`“marketing strategist” and “[e]ntrepreneur” who has launched two
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`Birkin-related projects.4 Dkt. 24, Amended Complaint (“Am. Compl.”)
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`3 The defendant’s legal name is Sonny Estival but he is
`referred to in this Opinion by his assumed name of Mason
`Rothschild, as he is in both parties’ briefing papers. Am. Compl.
`¶¶ 1, 8–9.
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`4 There is substantial disagreement between the parties as to
`whether Rothschild himself created the digital images associated
`with the MetaBirkins project or whether another artist -- Mark
`Berden -- was responsible for designing and rendering them. On the
`one hand, Rothschild argues that he should be considered the NFT’s
`progenitor: “[h]e had final approval” of all the digital images
`and, though “Mr. Berden functioned as a high-level studio
`assistant” who helped Rothschild create the digital images, Berden
`ultimately worked “at Rothschild’s direction.” Defendant’s
`Counter-Statement to Plaintiff’s Rule 56.1 Statement of Undisputed
`Facts (“Def. Counter-Statement to Plfs. SOMF”) ¶ 35. The
`plaintiffs, on the other hand, submit that, to the extent the
`MetaBirkins are an artistic creation at all, Mr. Berden should be
`considered the artist. See Plfs. Br. in Support of Summary Judgment
`(“Plfs. Br. in Support”) at 7. They allege that “Berden generated
`every image associated with the MetaBirkin NFTs” though
`“Rothschild did not provide Berden” with the requisite software,
`pay him a salary, or otherwise manage his hours. Id. This dispute,
`however, strikes the Court as legally irrelevant so far as the
`instant motions are concerned. Whether there is admissible
`evidence that the MetaBirkins are art -- and therefore, whether
`the Rogers test should apply -- does not turn on who designed the
`NFTs.
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`3
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 4 of 26
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`¶¶ 1, 8–9. First, in or around May 2021, Rothschild created a
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`digital image he entitled “Baby Birkin,” which depicted a 40-week-
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`old fetus gestating inside a transparent Birkin handbag. Dkt. 72,
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`Decl. of Megan Corrigan (“Corrigan Decl.”) ¶¶ 70–71. Rothschild
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`later sold the NFT linked to the “Baby Birkin” image for $23,500;
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`it recently resold for $47,000. Id. ¶ 72. Then, a few months later,
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`in December 2021, Rothschild created a collection of digital images
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`titled “MetaBirkins,” each of which depicted a unique image of a
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`blurry faux-fur-covered Birkin handbag. Am. Compl. ¶¶ 37, 76, 79,
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`Fig. 5 and Ex. Z. It is this “MetaBirkins” project that is the
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`subject of this litigation.
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`As with his earlier “Baby Birkin” project, Rothschild used
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`NFTs to sell the digital images to individual buyers. NFTs are
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`digital records of ownership, typically recorded on a publicly
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`accessible ledger known as a “blockchain.” See Mot. Dismiss Order
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`at 2. On the blockchain, an NFT functions as a sort of “digital
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`deed” representing ownership in a physical or digital asset or
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`assets. Here, each of the NFTs signified sole ownership of a
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`particular “MetaBirkin,” that is, a unique digital image of a
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`Birkin handbag rendered by Rothschild.
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`Rothschild
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`also commissioned
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`computer engineers to
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`operationalize a “smart contract” for each of the NFTs. A “smart
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`contract” refers to a computer code that is also stored on the
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`blockchain and that, among other things, determines the name of
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`4
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 5 of 26
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`each of the NFTs, constrains how they can be sold or transferred,
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`and controls which digital files are associated with each of the
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`NFTs. See Dkt. 78, Decl. of Kevin D. Mentzer (“Mentzer Decl.”),
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`Ex. 1 at 9, 10, 16, 21 n.9, 24, 29.
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`Importantly, the “smart contract” is distinct from the NFT
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`with which it is associated: the contract and the NFT can therefore
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`be owned by two unrelated people or entities. Id. Indeed,
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`Rothschild held onto the “smart contract” for each of the
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`“MetaBirkin” NFTs even after the NFTs themselves had been sold to
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`other buyers, which means he retains the power to change the image,
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`title, or other attributes associated with the NFTs. See id. at
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`11, 16-17 & 29.
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`On December 2, 2021, Rothschild sold the rights to purchase
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`the “MetaBirkin” NFTs before they were formally generated and
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`placed on the blockchain -- or “minted” -- to one hundred
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`purchasers through his website, https://metabirkins.com. Id., Ex.
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`1 at 9. Customers who browsed the website before the NFTs were
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`sold and minted would see that each NFT was associated with a
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`particular “MetaBirkins” digital image. Id. However, at the time
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`the minting rights were sold, but before the “MetaBirkins” NFTs
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`were formally minted and placed on the blockchain, a buyer viewing
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`his purchase details on the MetaBirkins website would see that his
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`NFT was now linked to a digital image of an object shrouded by a
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`white cloth, not a unique “MetaBirkins” bag. Corrigan Decl., Ex.
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`5
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 6 of 26
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`21 at 227:16-228-3. Once the NFTs were minted on December 3,
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`Rothschild -- using the “smart contract” -- replaced the “shrouded”
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`object image with a unique “MetaBirkin” bag associated with the
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`NFT, which continued to serve as the digital asset linked to each
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`NFT for the duration of the period covered by this case. Id.
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`Around the same time, Rothschild contemplated “minting” more
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`MetaBirkins NFTs to sell. Corrigan Decl., Ex. 29. In conversations
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`with his associate, Mark Berden, he remarked that “[MetaBirkin
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`NFTs] might be the next blue chip” and that they should consider
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`producing another one hundred NFTs. Id. Later, he revised this
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`figure upward to nine hundred, adding that the profits of these
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`newly minted NFTs should be divided between the two, with $400,000
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`going to Rothschild and $100,000 to Berden. Id. Insisting that he
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`was “sitting on a gold mine” and referring to himself as “a
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`marketing king,” Rothschild also discussed with his associates
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`potential future digital projects centered on luxury products,
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`such as watch NFTs called “MetaPateks” that would be modeled after
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`the famous watches produced by Patek Philippe. Id., Ex. 33. In
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`total, Rothschild and his associates produced one hundred
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`MetaBirkins, which have, through June 2022, sold for over $1.1
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`million. Am. Compl. ¶ 120. On top of receiving a cut of those
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`proceeds, Rothschild also received a creator fee for every re-sale
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`of a MetaBirkin NFT, amounting to 7.5% of the total price of sale.
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`Mentzler Decl., Ex. 1 at 5, 8-9.
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`6
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 7 of 26
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`In addition to the claims for infringement and dilution of
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`its marks, Hermès asserts that Rothschild’s project has disrupted
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`their efforts to enter the NFT market and hindered its ability to
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`profit in that space from the Birkin bag’s well-known reputation.
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`See Plfs. SOMF ¶¶ 109-112. Indeed, the company alleges that it has
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`for years developed potential uses for NFTs as part of its overall
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`business strategy. Rothschild’s efforts to crowd it out of the NFT
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`market, Hermès claims, places it at a competitive disadvantage:
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`its plans to enter this market follow on the efforts of several
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`top fashion brands -- including Gucci, Louis Vuitton, and
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`Balenciaga -- to develop NFT strategies that would allow them to
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`market their goods to a wider audience. Id. ¶ 113.
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`II. Procedural Background
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`Hermès brought this trademark action against Rothschild on
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`January 14, 2022, shortly after notifying the defendant of their
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`allegations in a December 16, 2021 cease and desist letter. See
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`Dkt. 1, Complaint. Plaintiffs press four sets of allegations in
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`their Amended Complaint. First, they claim that the MetaBirkins
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`NFTs infringe Hermès’ trademarks in the word “Birkin” and in the
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`design and iconography of the handbag.5 Second, they claim that
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`5
`Rothschild’s
`that
`maintains
`Hermès
`Although
`misappropriation of the Birkin bag’s “trade dress and imagery” are
`“aggravating factors” in this litigation, they assert that “it was
`Rothschild’s unauthorized use of the Birkin name for [his] NFTs
`that . . . gave rise to this action” and is thus the focus of the
`parties’ briefing. See Plfs. Br. in Support at 3.
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`7
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 8 of 26
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`Rothschild’s alleged appropriation of the “Birkin” mark diluted
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`and damaged the distinctive quality and goodwill associated with
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`the mark. Third, they claim that Rothschild’s use of a website
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`domain
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`name
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`--
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`https://metabirkins.com
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`--
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`constituted
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`cybersquatting, in that it was confusingly similar to the “Birkin”
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`mark, and therefore “harmed . . . and dilute[d]” the mark’s
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`distinctiveness and the goodwill associated with it. And fourth,
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`they claim that Rothschild’s use of its trademarks constitutes
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`unfair competition under both federal and state law.
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`III. Discussion
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`A. Hermès’ Trademark Infringement Claims
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`At the outset, the Court must decide which of the two
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`frameworks for assessing trademark infringement applies to the
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`claims in this case: the “Rogers” test or the “Gruner + Jahr” test.
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`Courts in this circuit and elsewhere6 have long applied a two-
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`tiered approach to trademark infringement claims. Alleged
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`trademark infringement in works of “artistic expression” are to be
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`evaluated under the speech-protective test set forth in Rogers v.
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`Grimaldi, 875 F.2d 994, 1000 (2d. Cir. 1989). Claimed infringement
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`6 The Third, Fifth, Sixth, Ninth, and Eleventh Circuits have
`largely adopted the Rogers test. See e.g., Seale v. Gramercy
`Pictures, 949 F. Supp. 331 (E.D. Pa. 1996), aff’d without opinion,
`156 F.3d 1225 (3d Cir. 1998); Westchester Media v. PRL USA
`Holdings, Inc., 214 F.3d 658 (5th Cir. 2000; ETW Corp. v. Jireh
`Publ’g, 332 F.3d 915, 937 (6th Cir. 2003); Gordon v. Drape
`Creative, Inc., 909 F.3d 257, 269-70 (9th Cir. 2018).
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`8
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 9 of 26
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`in all other works -- that is, those that are instead “primarily
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`intended to serve a commercial purpose” -- are subject to the
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`Gruner + Jahr test, which largely involves assessing whether a
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`defendant’s use of something akin to plaintiff’s trademark
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`confused customers as to the source of the work or product. See
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`Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub.
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`Co. v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993).7
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`The plaintiff contends that, because “Rothschild had no
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`discernable artistic intent or expression in promoting and selling
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`[the MetaBirkins NFTs],” it is the test outlined in Gruner + Jahr
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`for evaluating alleged trademark infringement in general that
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`should apply. See 991 F.2d 1072, 1074 (2d Cir. 1993); Dkt. 77,
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`Plf. Br. Mot. Summ. J. at 23. The defendant, by contrast, urges
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`the Court to affirm its previous ruling (made, however, just on
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`the pleadings) that the Rogers test for creative works applies
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`because the digital images associated with the MetaBirkins NFTs
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`“could constitute a form of artistic expression.” Mot. Dismiss
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`7 The Second Circuit fashioned the Rogers test with the
`understanding that trademark law has the potential to “intrude on
`First Amendment values” by discouraging the use of certain
`trademarks in expressive works.” AM General LLC v. Activision
`Blizzard, Inc., 450 F. Supp. 3d 467, 477 (S.D.N.Y. 2020). The
`test ensures, among other things, that “a markholder cannot shield
`itself from criticism by forbidding the use of its name in
`commentaries critical of its conduct.” Lamparello v. Falwell, 420
`F.3d 309, 318 (4th Cir. 2005).
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 10 of 26
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`Order at 11. This Court agrees with the defendant: it is the Rogers
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`test that still applies here on summary judgment.
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`1. What Works Are “Artistic” and Therefore
`Deserving of First Amendment Protection Under
`the Rogers Test?
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`
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`Deciding which of these tests to apply on summary judgment
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`first requires defining the set of works that are “artistic” and
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`therefore deserving of First Amendment protection. See Rogers, 875
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`F.2d at 1000. Rogers itself had no occasion to elaborate on which
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`works qualified as “artistic” because the work at issue there --
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`a Federico Fellini film parodying Fred Astaire and Ginger
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`Rogers -- was “indisputably” one of “artistic expression” and
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`therefore presumptively “deserv[ing of] protection.” Id. at 997;
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`see also Rogers v. Grimaldi, 695 F. Supp. 112, 120-121 (S.D.N.Y.
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`1988) (juxtaposing “artistic expression” with “commercial speech
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`. . . intended primarily to persuade the public to consume
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`something . . . or to convey the false impression that [a]
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`plaintiff was somehow involved with or had endorsed the product.”).
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`Later cases in the Second Circuit have done little to further
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`define “artistic expression.” See, e.g., Cliff Notes, Inc. v.
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`Bantam Doubleday Dell Pub. Group, Inc., 886 F.2d 490, 495 (2d Cir.
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`1989) (stating that “the Rogers balancing approach is generally
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`applicable to Lanham Act claims against works of artistic
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`expression,” a category which includes “parody”); United We Stand
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`Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 93 (2d
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`10
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 11 of 26
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`Cir. 1997) (explaining that the First Amendment protects the use
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`of trademarks to further “commentary, comedy, parody, news
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`reporting, or criticism,” among other things).
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`Decisions from our fellow district courts are somewhat more
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`helpful in shedding light on what constitutes “artistic
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`expression.” Most of these courts have held that the Rogers test
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`applies wherever the work is plainly expressive and the plaintiff’s
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`trademark is “not [used as] a source identifier.” See, e.g.,
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`Champion v. Moda Operandi, Inc., 561 F. Supp. 3d 419, 434 (S.D.N.Y.
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`2021) (quoting Yankee Pub. Inc. v. News Am. Pub. Inc., 809 F. Supp.
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`267, 276 (S.D.N.Y. 1992) (Leval, J.)) (noting that this represents
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`“an expan[sion] of the Rogers test).
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`The gist of these holdings is that as long as the plaintiff’s
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`trademark is used to further plausibly expressive purposes, and
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`not to mislead consumers about the origin of a product or suggest
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`that the plaintiff endorsed or is affiliated with it, the First
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`Amendment protects that use. See Yankee Pub. Inc., 809 F. Supp. at
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`276. Put another way, “[t]he First Amendment” in the trademark
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`context “protects an individual’s right to speak out against a
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`mark holder, but it does not permit an individual to suggest that
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`the mark holder is the one speaking.” SMJ Grp., Inc. v. 417
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`Lafayette Restaurant LLC, 439 F. Supp. 2d 281, 291 (S.D.N.Y. 2006).
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`The touchstone of the inquiry, then, is whether the trademark
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`was used to mislead the public about the origin of the product or
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`11
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 12 of 26
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`the parties that endorse or are affiliated with it. To understand
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`why, it helps to examine the purposes underlying trademark law and
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`how those goals inform the scope of its protection. Trademark law
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`is concerned with preventing consumer confusion and making it
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`easier for consumers to make informed decisions about products on
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`the market. See Elastic Wonder, Inc. v. Posey, 179 F. Supp. 3d
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`307, 316 (S.D.N.Y. 2016). More specifically, the reason that
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`trademark law protects a mark holder’s rights in certain “symbols,
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`elements, or devices used to identify a product in the marketplace”
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`is so that consumers can reliably determine the producer -- or
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`origin -- of a particular good. See EMI Catalogue P’ship v. Hill,
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`Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56 (2d. Cir. 2000).
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`This information is vital to ensuring that consumers can make
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`informed purchases: it “makes consumers confident that they can
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`identify brands they prefer,” made by the manufacturers they
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`prefer, “and can purchase those brands without being confused or
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`misled” about the qualities of the goods they are purchasing. Two
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`Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 784 n.19 (1992)
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`(Stevens, J., concurring).
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`Unlike copyright law (which implements Art. I, § 8, cl. 8 of
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`the Constitution), trademark law is not intended to protect the
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`owner’s right in a creative product simply to encourage creative
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`output, i.e., where there is no consumer confusion. See EMI
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`Catalogue, 228 F.3d 56, 63 (2d Cir. 2000). In other words,
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`12
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 13 of 26
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`trademark law, unlike copyright law, is not founded on a
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`constitutional mandate, and therefore must be applied with caution
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`where constitutionally protected speech is arguably involved.
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`2. The Rogers Test Governs This Case
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`Applying these principles, this Court determined in its Order
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`denying the defendant’s motion to dismiss that the Rogers test
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`applies to Hermès’ claims because, on the pleadings, Rothschild’s
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`MetaBirkins “could constitute a form of artistic expression.” Mot.
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`Dismiss Order at 11. Having now carefully examined the admissible
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`evidence adduced on the instant summary judgment motions, the Court
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`reaches the same conclusion as to the applicable test. This is
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`because defendant has identified admissible evidence supporting
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`its assertion that Rothschild’s use of Hermès’ marks did not
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`function primarily as a source identifier that would mislead
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`consumers into thinking that Hermès originated or otherwise
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`endorsed the MetaBirkins collection, but rather as part of an
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`artistically expressive project. See Champion, 561 F. Supp. 3d at
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`434.
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`Before proceeding, some clarity is needed on exactly what
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`works are at issue. “Because the digital images are not permanent
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`and can be easily replaced” through use of a smart contract, the
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`plaintiff believes that the title “MetaBirkins” refers to the NFTs
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`“separate and apart from the digital images” of faux-fur bags with
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`which they are associated. See Plfs. Br. in Support at 9. Indeed,
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`13
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 14 of 26
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`it is undisputed that the image associated with each of the NFTs
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`before they were minted was a white shrouded object until
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`Rothschild replaced that image with faux-fur Birkin bags through
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`use of the NFTs’ smart contracts. To this, Rothschild responds
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`that the term “MetaBirkins” includes the digital images themselves
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`because the descriptions that preceded the sales of the NFTs made
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`clear to consumers that they were purchasing a digital handbag
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`image and not just a digital deed divorced from that image.
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`Given the centrality of consumer confusion to trademark law
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`generally, it is best to view this issue from the perspective of
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`the prospective consumer. Individuals do not purchase NFTs to own
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`a “digital deed” divorced from any other asset: they buy them
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`precisely so that they can exclusively own the content associated
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`with the NFT.
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`What is more, undisputed evidence in the record indicates
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`that consumers did in fact understand themselves to be purchasing
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`exclusive ownership of the digital image alongside the NFT. A
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`screenshot of the MetaBirkins website before minting shows that
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`prospective buyers would have been shopping for an NFT associated
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`with the digital image of a Birkin bag, not a white shrouded
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`object. See, e.g., Rothschild Decl ¶ 11. To be sure, since
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`Rothschild held onto the smart contract, he had the technical
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`ability to change the digital image associated with the NFT,
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`essentially at will. But the fact that Rothschild could do so in
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`14
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 15 of 26
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`the abstract is irrelevant to the undisputed facts of this case:
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`that, for all but a day, the MetaBirkins NFTs were linked to an
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`image of a unique digital handbag and that consumers understood
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`themselves to be buying a deed to that handbag.
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`Thus, the title “MetaBirkins” should be understood to refer
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`to both the NFT and the digital image with which it is associated.
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`Indeed, a reasonable inference from the admissible evidence
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`presented on these motions is that the relevant consumers did not
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`distinguish the NFTs offered by Mr. Rothschild from the underlying
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`MetaBirkins images associated with the NFTs and, instead, tended
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`to use the term “MetaBirkins NFTs” to refer to both. See e.g.,
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`Dkt. 64, Decl. of Mason Rothschild (“Rothschild Decl.”) ¶ 11.
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`“When resolving the somewhat competing protections of the
`
`Lanham Act and the First Amendment, courts have distinguished
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`between uses of a mark ‘for an expressive purpose’ . . . and uses
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`of a mark to identify the source of a message.” SMJ Group, 439 F.
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`Supp. 2d at 291. Because the admissible evidence introduced on the
`
`instant motions indicates that both kinds of uses were present,
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`the Rogers test remains the applicable one as far as these motions
`
`are concerned. See Mot. Dismiss Order at 11.
`
`Indeed, the MetaBirkins images themselves, with their
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`depiction of Birkin bags covered with fur, suggest that they were
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`originated as a form of artistic expression. While there may have
`
`been some confusion in this respect, as plaintiffs argue, it should
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`
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 16 of 26
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`also be noted that, after Hermès sent to Rothschild a cease and
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`desist letter outlining its allegations, Rothschild placed a
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`prominent disclaimer on the MetaBirkins website stating that his
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`project was “not affiliated, associated, authorized, endorsed by,
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`or in any way officially connected with Hermès, or any of its
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`subsidiaries or affiliates.” Id. ¶ 25. Further, when several
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`publications mistakenly reported an affiliation between Hermès and
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`the MetaBirkins project,8 the defendant’s publicist, Kenneth Loo,
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`reached out and asked that these publications issue corrections
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`regarding the mistaken affiliation. Id. ¶¶ 122, 126-128. And though
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`Rothschild sought to partner with Hermès on the project, after his
`
`attempts failed to bear fruit he did not represent to others that
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`Hermès had agreed to work with him. Id.
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`Further still, evidence contemporaneous with the launch of
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`the project suggests that Rothschild viewed the project as a
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`vehicle to comment on the Birkin bag’s influence on modern society.
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`For instance, in an interview with Yahoo Finance dated December 6,
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`2021 -- ten days before Hermès sent its cease and desist letter to
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`Rothschild outlining its allegations -- Rothschild characterized
`
`
`8 Elle UK published an article in which they reported that
`“Hermes had created the MetaBirkins NFT and referred to the
`MetaBirkins as a Birkin.” See Plfs. SOMF ¶ 123. L’Officiel, a
`French fashion magazine, wrote that Hermes “partnered with”
`Rothschild to create “a new line of Birkin bags,” and “another
`collection of Birkin NFTs.” Corrigan Decl., Ex. 67 at 121; Ex 72.
`The New York Post stated that Hermes had “unveiled the MetaBirkin
`-- a VR version of its signature bag.” Plfs. SOMF ¶ 128.
`
`
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 17 of 26
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`the NFT collection as “an experiment to see if [he] could create
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`that same kind of illusion that [the Birkin bag] has in real life
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`as a digital commodity.”9 Plfs. SOMF ¶ 168. The decision to make
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`them faux-fur covered, he also explained, was an attempt to
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`introduce “a little bit of irony” to the efforts of some fashion
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`companies to “go fur-free.” Id.
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`To be sure, Hermès has offered admissible evidence
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`contradicting each of defendant’s assertions and the evidence
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`referenced above. For example, there is evidence introduced by
`
`plaintiffs from which a reasonable juror could conclude that
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`Rothschild’s claims that he viewed MetaBirkins as a largely
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`artistic endeavor is a fabrication. For example, in discussions
`
`with investors, Rothschild observed that “he doesn’t think people
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`realize how much you can get away with in art by saying ‘in the
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`style of’” and boasted that he was “in the rare position to bully
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`a multi-billion dollar corp[oration].” Plfs. SOMF ¶¶ 176, 178.
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`Similarly, in one text message, Rothschild told associates that he
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`wanted to make “big money” by “capital[izing] on the hype” in the
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`media generated for the collection. Def. SOMF ¶ 200. And in another
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`text message, Rothschild encouraged Mr. Berden to generate the
`
`
`9 In the same interview, Rothschild also elaborated on the
`communicative message behind his earlier “Baby Birkin” project,
`explaining that the decision “to put a baby in a Birkin and go
`through all stages of pregnancy” was an “artistic representation”
`that “play[ed] on the words baby and Birkin,” which is “the most
`sought after Birkin size.” Plfs. SOMF ¶ 168.
`
`
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 18 of 26
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`MetaBirkins NFTs “real fast” so that they could “print some money”
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`from their sale, reassuring Berden that the “simple” digital images
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`could later be “swapped out” for “better ones.” Id. ¶ 218.
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`However, such evidence does little more than show that
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`Rothschild’s project was driven in part by pecuniary motives, a
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`fact that does not bar application of the Rogers test. Whereas as
`
`a general matter “speech . . . primarily intended to serve a
`
`commercial purpose” falls outside the scope of the First Amendment,
`
`Rogers v. Grimaldi, 695 F. Supp. 112, 120-121 (S.D.N.Y. 1988), a
`
`court may not strip an artistic work of First Amendment protection
`
`merely because the artist seeks to market and sell his creative
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`output. See Mot. Dismiss Order at 12 (“Rogers is not inapplicable
`
`simply because Rothschild sells the images -- the movie studio
`
`defendant in Rogers sold the film at issue.”). Put another way,
`
`courts should not expect that the First Amendment applies only to
`
`the works of “starving artists” whose sole mission is to share
`
`their artistic vision with the world. Overall, the very fact that
`
`there is a genuine dispute of fact as to virtually every aspect of
`
`plaintiffs’ claims only goes to show why summary judgment is not
`
`appropriate here, but not why the Rogers balancing test is not the
`
`right test against which to evaluate the parties’ competing
`
`inferences.
`
`
`
`
`
`3. The Parties’ Motions for Summary Judgment As To
`the Rogers Factors Are Denied
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`18
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 19 of 26
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`While the Rogers test is therefore the governing framework
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`for these motions, the Rogers test does not offer defendants
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`unfettered license to infringe another’s trademarks. See Rogers,
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`875 F.2d at 998 (“First Amendment concerns do not insulate titles
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`of artistic works from all Lanham Act claims.”). “Works of artistic
`
`expression . . . deserve protection,” but they “are also sold in
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`the commercial marketplace like other more utilitarian products,
`
`making the danger of consumer deception a legitimate concern that
`
`warrants some government regulation.” Id. In certain instances,
`
`the public’s interest in avoiding competitive exploitation or
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`consumer confusion as to the source of a good outweighs whatever
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`First Amendment concerns may be at stake.
`
`The Rogers test incorporates these competing considerations.
`
`Specifically, an otherwise artistic work is not entitled to First
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`Amendment protection under that test if the plaintiff can show
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`that either (1) the use of its trademark in an expressive work was
`
`not “artistically relevant” to the underlying work or (2) the
`
`trademark is used to “explicitly mislead” the public as to the
`
`source or content of the underlying work. Id.
`
`
`
`To determine whether either party is entitled to summary
`
`judgment under the Rogers test, then, the Court must inquire
`
`whether there remains a “genuine issue as to any . . . fact”
`
`material to meeting either of the prongs of the test. Because the
`
`Court concludes that genuine issues of material fact exist with
`
`
`
`19
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`Case 1:22-cv-00384-JSR Document 140 Filed 02/02/23 Page 20 of 26
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`respect to both these elements, it denies both parties’ summary
`
`judgment motions in their entirety.
`
`i.
`
`The “Artistic Relevance” Factor
`
`The artistic relevance prong of the Rogers test “ensures that
`
`the defendant intended an artistic -- i.e., non-commercial
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`association with the plaintiff’s mark, as opposed to one in which
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`the defendant intends to associate with the mark to exploit the
`
`mark’s popularity and good will.” Louis Vuitton Malletier S.A. v.
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`Warner Bros. Ent. Inc., 868 F. Supp. 2d 172, 178 (S.D.N.Y. 2012).
`
`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].” Rogers, 875 F.2d at 1001 (emphasis in original).
`
`Still, “the level of relevance” is not “zero.” E.S.S. Ent.
`
`2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th
`
`Cir. 2008); see Rogers, 875 F.2d at 1001 (cautioning that the
`
`artistic relevance prong is not met where the rel