With a jury trial pitting Hermès against Mason Rothschild over the latter’s MetaBirkins NFTs fast approaching, the parties are trying to get the court to block certain evidence from being admitted at trial, filing respective motions in limine with the court on Monday. The impending hearing comes a year after Hermès filed suit against Rothschild in New York federal court, accusing him of trademark infringement and dilution in connection with the promotion and sale of the allegedly confusingly named NFTs. The case has been closely watched in light of the fact that it raises some new — and nuanced — questions about the applicability of “real world” trademark rights, fair use and the First Amendment in the virtual world.
Ahead of the start of the trademark and web3-centric MetaBirkins trial later this month, counsel for Rothschild are seeking to get the court to exclude a number of Hermès’ proposed exhibits, either in whole or in part. as well as any testimony about such excludable portions. Specifically, Rothschild seeks to get the court to…
1. Select Social Media Postsincluding “comments from unidentified third parties that Hermès intends to offer as purported evidence of genuine confusion as to the source of [the] MetaBirkins NFT artworks.” Through the posts, which likely show comments from social media users expressing their beliefs that the MetaBirkins NFTs are authorized/sponsored by Hermès, Rothschild argues that the “anonymous online comments should be excluded because they are inadmissible hearsay and not proven otherwise is of genuine confusion and therefore not relevant to any issue to be tried in this case.
In particular, Rothschild’s counsel claims that Hermès “has not identified the authors of any of these social media accounts … making the authors’ identity, meaning and intent unknown and unreliable.” And even if the social media posts were not inadmissible hearsay, Rothchild argues that “they do not show or suggest that [his] use of Hermès’ [Birkin] brand may inflict commercial injury in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation,” as there is “no indication that these social media posts were created by actual or potential customers of either Mr. . Rothschild or Hermès.”
2. Testimony of Boriana Guimberteau – This is the lawyer that Hermès referred to in its complaint as confused about the source of the MetaBirkins NFTs. While “Hermès intends to present [her testimony] as evidence of actual confusion,” Rothschild asserts that Guimberteau “has no relation to potential or actual. MetaBirkins consumers and is therefore not evidence of likely confusion.” There is also a risk of bias, according to Rothschild, as Guimberteau is a lawyer “who represents luxury fashion brands and claims to have knowledge of NFTs – and is therefore likely to be viewed improperly as … a witness whose testimony is greater must gain weight..”
3. Post-litigation statement and certain communications by mr. Rothschild – Rothschild also wants to block a certain – redacted – statement he made in “private communication to his friends and associates about his lawyers in this case”. He argues that the statement is “irrelevant to the issues to be tried in this case, is highly prejudicial, and is likely to distract or confuse the jury.”
Rothschild also wants to block messages – again redacted – he made after Hermès filed suit that reflected his “layman’s view”, presumably of the case law. The messages “have no relevance or probative value to any issue to be tried,” his lawyer argues, and “Hermès’ sole purpose in attempting to represent. [them] would be to smear Mr. Rothchild’s character in general.”
Regarding Hermès’ motion, the Birkin bag maker is trying to get the court to…
1. The testimony of Dr. Blake Gopnik & Dr. David Neal – According to Hermes, Rothschild offers Dr. Gopnik as an expert in the art to support his defense that his promotion and sale of the METABIRKINS NFTs is protected by the First Amendment. The brand’s lawyer argues that Dr. Gopnik should be precluded from testifying on the grounds that his “opinion is not based on any reliable data or methodology to support his mere ipse dixit assertions.” he “opinion on ultimate legal conclusions;” his opinions “do no more than repeat Rothschild’s version of his own statements and actions; and he “interprets and opines about Rothschild’s intent in creating and promoting the METABIRKINS NFTs.”
Hermes also wants the testimony of dr. Blocking David Neal, who is expected to rebut the survey evidence of actual confusion collected by Hermes’ expert on the grounds that Neal’s opinions and testimony “are not based on reliable survey methodology, they do not assist the trier of fact , and if allowed, Hermès would be unfairly disadvantaged.”
2. Proposed trial exhibits – The bulk of Hermès’ backlash comes in response to evidence Rothschild is trying to introduce that he claims has “nothing to do with either his METABIRKINS NFTs or Hermès’ infringement claims,” including images of Andy Warhol and other artists’ works and post – the submission of interviews.
“As he has in the press and in other filings,” Hermès states that most of Rothschild’s arguments are aimed at claiming that “he is somehow protected” — from trademark liability — “because other artists were involved in behavior (not related to Hermès or BIRKINS) ) which he believes is analogous to his own.” Likewise, he “seems to argue that because others have had projects involving the BIRKIN name or design, it somehow provides him with safe harbor to exploit the same in connection with METABIRKINS NFTs.” But this evidence is, according to Hermès, “irrelevant”, and, even if it were relevant, it is more prejudice than proof.
Perhaps the best example of these claims (which will almost certainly come up during the MetaBirkins trial), Hermès claims, are Rothschild’s references to Andy Warhol and the Campbell’s Soup can paintings. Although “neither Warhol nor Campbell’s Soup has anything to do with this matter,” Hermès argues that Rothschild wants to introduce evidence of Warhol’s work, which would create “a false equivalence” between itself and “Warhol’s storied career.” [that] will only serve to confuse the jury and any flimsy probative value is dwarfed by the resulting prejudice to Hermès.” As such, “any reference to Warhol for the purpose of asserting that acceptance of his work as ‘art’ immunizes Rothschild from infringement liability for the METABIRKINS NFTs must be precluded.”
Moreover, Hermès argues that “the nature and extent of Warhol’s claim to be an ‘artist’ as opposed to an ‘infringer’ is currently before the US Supreme Court” in the Andy Warhol Foundation for the Visual Arts, Inc. f. Goldsmith case that “will examine whether Warhol had the right to use someone else’s photograph under copyright law.” Given the complexity of the legal issues in the ongoing Goldsmith case, Hermès claims that “it is simply inaccurate for Rothschild to suggest or imply that Andy Warhol acted within the bounds of the law and that Rothschild therefore provides a safe haven become.”
Still, delving into another argument that will no doubt arise at trial (with or without the evidence at issue), Hermès states that its main claim against Rothschild is for trademark infringement arising from its use of the METABIRKINS name in connection with the METABIRKINS NFTs , which are “associated with images of handbags which, by Rothschild’s admission, are intended to resemble Hermès’ BIRKIN bags.” With this in mind, Hermès argues that “Rothschild tried to argue this [its] claim is about the images alone, [but] this is wrong,” according to Hermes, who states that “even Rothschild does not argue that the pieces of code that create the NFTs, labeled METABIRKINS, are ‘art.'” While the images are “obviously important,” simply “to comparing this case to Warhol’s Campbell’s Soups images is highly flawed.”
Beyond Warhol, Hermès also claims that Rothschild should not be able to introduce third-party evidence of “artistic” uses of Hermès’ BIRKIN brand and/or trade dress, including images of photographer Tyler Shields’ work and songs by Beyonce, Cardi B, and Gunna . “Again, just because other individuals or entities were involved in projects related to the BIRKIN brand or handbag does not mean that Rothschild has that right,” argues Hermès. “This is again to create the same type of false analogy: Rothschild seeks to protect his own behavior on the basis of that of others. This was a recurring theme during depositions and will be repeated during trial if these exhibits are not excluded.”
And finally, the brand argues that news articles discussing details of this action should be excluded, since “Rothschild and his counsel have spoken to the media about this action and the parties’ claims,” neither Hermès nor his counsel have done so. As a result, it claims that such coverage of this case was “susceptible to bias,” and should not be included.
The case is Hermès International, et al. f. Mason Rothschild, 1:22-cv-00384 (SDNY).