This browser is not actively supported anymore. For the best passle experience, we strongly recommend you upgrade your browser.
Asset 3
  • Home Page
  • About
  • People
  • Experience
  • Insights
  • Careers
  • Public Interest
  • Diversity, Equity & Inclusion
Asset 1

Contact us

Asset 2

Locations

  • Contact us
    Contact us
  • Locations
    Locations
  • Search
    Search
  • About
    • Message from the CEO
    • Firm History
    • Pro Bono
    • Women in Business Series
    • Law Firm Network
  • People
  • Experience
    • Practices & Industries
    • Geographies
  • Insights
    • Alerts & Bulletins
    • Articles
    • Briefings
    • Events
    • Firm News
    • Podcasts
    • Press Releases
  • Careers
    • Experienced Lawyers
    • U.S. Law Students
    • London Trainee Program
      • What to Expect
    • Staff & Paralegals
    • Professional Development
  • Public Interest
  • Diversity, Equity & Inclusion
  • Contact Us
  • Location
  • Search
  • About
    • Message from the CEO
    • Firm History
    • Pro Bono
    • Women in Business Series
    • Law Firm Network
  • People
  • Experience
    • Practices & Industries
    • Geographies
  • Insights
    • Alerts & Bulletins
    • Articles
    • Briefings
    • Events
    • Firm News
    • Podcasts
    • Press Releases
  • Careers
    • Experienced Lawyers
    • U.S. Law Students
    • London Trainee Program
      • What to Expect
    • Staff & Paralegals
    • Professional Development
  • Public Interest
  • Diversity, Equity & Inclusion

Search People

Search by last name

A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

see all people

Asset 3
  • twitter
  • facebook
  • youtube
  • rss
  • Contact Us
  • Terms of Use
  • Privacy
  • Sitemap
  • twitter
  • facebook
  • youtube
  • rss

© 2022 Brown Rudnick LLP. Attorney advertising.

All Rights Reserved.

All Posts
print-logo
February 7, 2023 | 2 minutes read

NFTs for the Sake of Art or Profit: What Will Matter for Trademark Infringement

4
13
Avatar
Daniel Healy
Partner
Avatar
Daniel Healy
Partner
featured image
4
13

A current case thrusting NFTs (non-fungible tokens) into the forefront of trademark law involves a defendant arguing that his right to create and sell NFTs is based on the same rights that Andy Warhol had to create and sell paintings of Campbell's Soup cans. In the Hermès International et. al. v. Rothschild, Rothschild was sued for creating and selling NFTs that included images of Hermès' famous Birkin handbags. The NFTs are called MetaBirkins. The NFT images portray the bags decorated in an array of colors and patterns (see metabirkins.com).

Hermès sued claiming, among other things, trademark infringement. Rothschild contends as part of his defense that he is permitted to create and sell the NFTs because they are art. Based on reports of the testimony elicited to date, Hermès has attempted to portray Rothschild as primarily motivated by potential profits, rather than artistic interests. Rothschild appears to be attempting to demonstrate that the images are conceptual art and, even if he is able to make money selling them, they constitute non-infringing art. The legal arguments pit fundamental trademark arguments against each other. Most people would agree that trademarks should not be used to prevent others from creating art. At the same time, many of those same people might be uncomfortable determining something is art if the purpose of the creation was to be sold for profit. 

Some commentators have likened NFTs to baseball cards, which offers a less artistic view of NFTs. But not all NFTs are the same. It likely is not a surprise to many attorneys that Judge Rakoff, who is presiding over the case, denied summary judgment and left the major questions to be decided by a jury at trial. That tends to focus the case on the NFTs at issue and the defendant's creation and sale of them, rather than on NFTs generally.

Judge Rakoff also refused to let an expert testify regarding the artistic nature of the NFTs. This ruling may be slightly more of a surprise. It probably places a great deal of focus on the facts for the jury to sift through. The ruling eliminates a witness that would have offered an opinion of those facts. The jury may need to parse through many nuanced decisions about the nature of the MetaBirkin NFTs based almost solely on the testimony of the parties.

Rothschild's trial testimony has been reported to be colorful. Over multiple days of testimony he was asked about his texts concerning the MetaBirkins, how he felt about being sued and his plans for future NFTs.  

The question that may end up being resolved may not be whether NFTs can be protected to the same degree as Andy Warhol's art. Instead, the trial could end up determining a more limited question focused on whether the defendant was able to establish the facts needed to enjoy such protection.

Still, resolution of that question could have widespread importance. A great number of the NFTs in existence are described, and often marketed and promoted, as "collectibles." The outcome of the MetaBirkins case could be important in determining whether such collectibles include NFTs designated as "art" and whether there is a distinction based on the profit motive of the creator or seller of collectible NFTs. If the artistic nature is reduced or negated based on whether the NFTs are sold as collectibles for profit, then it would be a significant decision in defining, from a legal perspective, what NFTs are.

Ongoing use of NFTs likely will be affected by the decision, particularly as to NFTs that include images of famous or commercial items. Additionally, in recent years the U.S. Patent &Trademark Office shifted some of its views on how NFTs should be described in trademark applications. Guidance from court decisions could affect those views and future applications as well.

Rothschild's effort to compare his work to Warhol took a hit Monday when Judge Rakoff excluded the testimony of an expert who planned to testify on behalf of the defense that "MetaBirkins" are akin to the deceased artist's famed paintings. That left Rothschild to make the comparison himself as he testified Tuesday and Wednesday. The defendant told the jury that, in his view, conceptual artists are perfectly within their rights to profit as they seek out buyers, investors and influencers to grow their reputations.
www.law360.com/...

Tags

nft, trial, trademark
Avatar
Daniel Healy
Partner
Avatar
Daniel Healy
Partner
post featured image
Mar 27, 2023

Former Silicon Valley Bank Acquired by First-Citizens Bank & Trust Company in North Carolina

By Michael Cohen
At breakneck speed, the Federal Deposit Insurance Corporation (FDIC) has concluded a sale of Silicon Valley Bridge Bank, N.A. (formerly...
3
20
12
35

Latest Insights

post featured image
Mar 14, 2023

EPA Proposes PFAS Drinking Water Regulation

By Kyle Johnson
4
10
14
post featured image
Mar 13, 2023

SVB Collapse – Closing Your Account

By Michael Cohen
2
37
39
post featured image
Mar 13, 2023

Historic Weekend Ends With Relief for SVB Depositors – Now the Work Begins!

By Michael Cohen Ben Hron
10
32
42
post featured image
Mar 12, 2023

Brown Rudnick Webinar: Silicon Valley Bank Failure: What We Know Now and What to Do

By Julia Bennett Thomas Phillips Michael Cohen Amanda Varella Barbara Klepper Stephen Best Stephen Palley Daniel Healy Camille Vasquez Neil Foster Tim Davison +8 more...

Show less

3
42
45