Trademarks

Hermès v. Rothschild: The MetaBirkins Verdict and Trademark Dilution in the NFT Market

A Manhattan jury found that Mason Rothschild's MetaBirkins NFTs infringed and diluted the famous Birkin mark — and that the First Amendment did not save them. The case maps how dilution doctrine and Rogers v. Grimaldi apply to digital goods.

April 17, 2026
A luxury handbag rendered as a digital artwork
The jury treated the MetaBirkins NFTs as commercial goods bearing a famous mark, not as protected artistic commentary. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

Hermès International and Hermès of Paris, Inc. v. Mason Rothschild (a/k/a Sonny Estival), No. 1:22-cv-00384 (S.D.N.Y.), produced one of the first jury verdicts to test how trademark infringement and dilution doctrine apply to non-fungible tokens. After a trial before Judge Jed S. Rakoff that ran from January 30 to February 8, 2023, the jury returned a verdict for Hermès on February 8, 2023, finding the defendant liable for trademark infringement, trademark dilution, and cybersquatting, and rejecting his First Amendment defense. On June 23, 2023, Judge Rakoff entered a permanent injunction (Dkt. No. 140). The dispute is now on appeal to the U.S. Court of Appeals for the Second Circuit (No. 23-1081), which heard oral argument on October 23, 2024.

At a glance

  • Case: Hermès International v. Rothschild, No. 1:22-cv-00384 (S.D.N.Y.)
  • Court / judge: U.S. District Court, Southern District of New York; Hon. Jed S. Rakoff
  • Trial: January 30 – February 8, 2023; jury verdict February 8, 2023
  • Verdict: Liability for trademark infringement, dilution, and cybersquatting; no First Amendment protection
  • Damages: $110,000 for infringement and dilution (Rothschild’s profits and resale commissions) plus $23,000 for cybersquatting — $133,000 total
  • Post-trial: Permanent injunction entered June 23, 2023 (Dkt. No. 140), including transfer of the metabirkins.com domain and disgorgement of post-trial profits
  • Status: On appeal, 2d Cir. No. 23-1081 (argued Oct. 23, 2024)

The facts are now familiar. In December 2021, Rothschild minted a collection of 100 NFTs, each tied to a digital image of a fur-covered handbag he labeled “MetaBirkins.” The tokens initially sold for roughly $450 and traded on secondary markets, and Rothschild promoted them through the metabirkins.com domain and associated social-media accounts. Hermès, owner of the famous BIRKIN word mark and the trade dress of the Birkin handbag, sued for infringement, dilution, and cybersquatting under the Lanham Act.

Dilution by blurring under the TDRA

The dilution claim is the analytically distinct piece of the case and the reason it matters beyond the law of consumer confusion. Under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c), the owner of a mark that is “famous” — widely recognized by the general consuming public as a designation of source — may enjoin a later use that is “likely to cause dilution by blurring or dilution by tarnishment,” regardless of actual or likely confusion and regardless of competition. Dilution protects the selling power and distinctiveness of a famous mark itself, not the consumer’s ability to identify source.

Birkin is close to a paradigm case of fame. It is a single-source designation for one of the most recognized luxury goods in the world, exactly the kind of strong, distinctive mark the dilution statute was designed to insulate. That threshold finding largely drove the blurring analysis. Dilution by blurring, defined in § 1125(c)(2)(B), turns on a multi-factor inquiry — the degree of similarity between the marks, the distinctiveness and recognition of the famous mark, the extent of the senior user’s substantially exclusive use, and, critically here, whether the junior user intended to create an association with the famous mark. “MetaBirkins” is the Birkin mark with a metaverse prefix appended; the similarity factor and the intent factor both pointed sharply toward Hermès, and Rothschild’s own marketing trumpeted the association.

What makes the dilution theory powerful in a setting like this is that it does not require Hermès to prove that anyone was confused about whether it had authorized the NFTs. Even a consumer who understood perfectly well that Hermès had nothing to do with the project could, on the dilution theory, be participating in the erosion of the Birkin mark’s singular association with Hermès handbags. The verdict thus rested on two overlapping but independent harms: confusion as to source (infringement) and the whittling-away of distinctiveness (dilution).

Tarnishment — the other branch of TDRA dilution, reaching uses that harm a famous mark’s reputation through unsavory or unflattering associations — was a more awkward fit and far less central. The MetaBirkins images were not obviously degrading to the Birkin reputation; if anything the “harm” Hermès articulated was associational and dignitary in the blurring sense. The case is therefore best read as a blurring case, and practitioners should resist the temptation to cite it as a broad tarnishment precedent.

The Rogers / First Amendment interplay

The hard doctrinal problem was not whether the elements of infringement and dilution could be met in the abstract, but whether the First Amendment displaced ordinary trademark analysis because the NFTs were, at least in part, expressive works. Under Rogers v. Grimaldi, the use of a trademark in an expressive work does not violate the Lanham Act unless the use either (1) has no artistic relevance to the underlying work or (2) is explicitly misleading as to source or content. Judge Rakoff held early in the case — denying Rothschild’s motion to dismiss in 2022 and the cross-motions for summary judgment in early 2023 — that Rogers, rather than the ordinary likelihood-of-confusion framework, supplied the governing test, but that genuine fact disputes on both prongs required a trial.

The court then took the unusual step of folding Rogers into the jury’s task. The jury was instructed that Hermès bore the burden of showing that the MetaBirkins were not entitled to First Amendment protection — that is, that the use either lacked genuine artistic relevance or was explicitly misleading. The First Amendment thus operated not as an affirmative defense Rothschild had to establish, but as part of Hermès’s affirmative case. In finding for Hermès, the jury necessarily concluded that the use cleared the Rogers gate — most plausibly on the “explicitly misleading” prong, given the trial record about Rothschild’s intent to capitalize on consumer association with Hermès.

The appeal squarely targets this structure. Rothschild argues that Judge Rakoff improperly allowed the jury to weigh his profit motive and intent to trade on Hermès’s goodwill in a way that swallowed the speech protection Rogers is meant to guarantee for artistic works. Overhanging the appeal is the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), handed down months after the verdict, which held that Rogers does not apply at all when an alleged infringer uses a mark as a mark — as a source identifier for its own goods. The Second Circuit’s resolution will likely clarify whether Rogers even applies to a project like MetaBirkins or whether, after Jack Daniel’s, ordinary confusion and dilution analysis governs from the start.

NFTs as “goods”

Underneath both the infringement and dilution holdings sits a characterization that may prove the most durable lesson: the jury treated the NFTs as commercial goods bearing the Birkin mark, not as the digital equivalent of a painting that merely depicts a handbag. The evidence emphasized that purchasers acquired the tokens precisely so they could exclusively own the associated content, that the project was marketed and priced like a product line, and that Rothschild used the metabirkins.com domain and brand-style promotion to sell them.

That framing matters because it determines which legal regime applies. If an NFT is “art” that comments on a brand, Rogers and the First Amendment do heavy work. If an NFT is a “good” sold under a mark, it is subject to the same trademark rules as a handbag, a T-shirt, or a perfume. The verdict signals that courts will look past the technical novelty of the token to the economic substance of what is being sold and how it is marketed. A token whose entire value proposition is its tether to a famous brand will be hard to recast as protected commentary on that brand.

Open questions

  • Does Rogers v. Grimaldi survive Jack Daniel’s in cases where a mark is used to brand and sell NFTs, or is the threshold confusion/dilution test the right starting point? The Second Circuit may answer this directly.
  • How should the “use as a mark” line be drawn for digital assets that are simultaneously expressive images and tradeable products?
  • When a famous mark is invoked in a clearly associational way, how much independent work does the dilution-by-blurring theory do once infringement is established — and would dilution alone support liability if confusion were absent?
  • What is the proper jury instruction architecture for the First Amendment in trademark cases after Jack Daniel’s: a threshold question of law, an element of the plaintiff’s case, or an affirmative defense?

Implications

  • Famous-mark owners gain a clear dilution path against brand-tethered NFTs. Where a mark qualifies as famous and a digital project is built around association with it, blurring offers liability untethered to proof of confusion.
  • “It’s art” is not a categorical shield. The economic substance of an NFT project — pricing, marketing, domain use, and the buyer’s reason for purchasing — can defeat a Rogers/First Amendment defense.
  • Marketing discipline is dispositive. Rothschild’s own promotional statements supplied much of the intent evidence. Creators invoking a brand should expect their marketing to be read against them.
  • Remedies reach the digital infrastructure. The injunction ordered transfer of the metabirkins.com domain and related accounts and disgorgement of post-verdict income, while declining to order destruction or seizure of the NFTs themselves — a tailored remedy that addresses ongoing confusion without resolving every constitutional question.
  • Appellate uncertainty remains. Until the Second Circuit rules, the district court’s framework is persuasive but not settled circuit law, especially on the Rogers/Jack Daniel’s interaction.

Frequently asked questions

Did Hermès have to prove consumer confusion to win on dilution? No. Dilution by blurring under 15 U.S.C. § 1125(c) is independent of confusion and competition. It protects the distinctiveness of a famous mark from being whittled away by associations created by others. Hermès did also prevail on infringement, which does require likely confusion, but the dilution theory stands on a separate footing.

Why was the First Amendment defense unsuccessful? The jury was instructed under Rogers v. Grimaldi and effectively found that the use of the Birkin mark was explicitly misleading as to source — driven by trial evidence that Rothschild intended to trade on Hermès’s goodwill rather than to make genuine artistic commentary. Because the NFTs were treated as goods sold under the mark, the speech protection that shields truly expressive works did not apply.

Is the MetaBirkins decision binding nationwide? No. It is a district-court jury verdict and post-trial ruling from the Southern District of New York, currently on appeal to the Second Circuit (No. 23-1081). It is influential and frequently cited, but it is not binding precedent, and the appellate decision — particularly on how Jack Daniel’s affects Rogers — may reshape its reasoning.

Authorities and sources