Archives for January 2022

UPDATE:

May 6, 2022

Judge Jed Rakoff of the US District Court in Manhattan issued a decision this week rejecting Mason Rothschild’s motion to dismiss the Herès Paris complaint about trademark infringement of their Birkin handbag. A full opinion with the Judge’s reasoning is pending, outlining why Rothschild’s non-fungible token (NFT), Meta Birkin, is an infringement of the luxury brand’s famed purse, with a retail price starting at $10,145 for the base model. We will continue to follow this case for updates on the impact NFTs have on trademark law.

January 25, 2022

Hermès International and Hermès of Paris filed a complaint in the Southern District of New York on January 14^th against Mason Rothschild for trademark infringement of the fashion house’s famed Birkin handbag. Rothschild is the creator of MetaBirkin, a collection of non-fungible tokens (NFTs) featuring renditions of the Birkin bag covered in colorful fur for sale over various blockchain sites. The MetaBirkin enterprise seems to have sprung from Rothschild’s collaboration with Eric Ramirez, Baby Birkin, an NFT one-off depicting what looked like a transparent Birkin bag with a suspended human fetus inside it. That NFT was sold for the equivalent of $23,500.00 USD in blockchain currency.

The new collection of NFTs was made available to the public on December 2, 2021 and consists of 100 tokens. The first NFT of the MetaBirkin collection to sell went for a whopping $42,000.00 through the blockchain platform, OpenSea. When Hermès flagged the sale as an outright trademark infringement and dilution of its Birkin mark, OpenSea sided with the fashion house and removed MetaBirkin from its site. Almost immediately, Rothschild’s NFTs were back up for sale on another blockchain platform, Rarible Store.

Mason Rothschild maintains the NFTs are individual works of his own “artistic expression” and went as far as to add a disclosure to his website that the MetaBirkins are in no official way related to the Hermès brand. Blockchain sites selling the NFTs do not carry the same message. The luxury brand views Rothschild’s disclosure as a transparent and unsuccessful ploy to shield himself from a monumental trademark infringement litigation after being spooked from their cease and desist letter. Hermès also argues the disclosure’s mention of their name a total of three separate times and link to their website furthers the confusion over the relationship between Hermès’s Birkin and MetaBirkin.

Hermès views Rothschild’s use of their mark as a “get rich quick” scheme that is prohibiting the brand’s own exploitation of their existing trademarks in the new digital commodities marketplace. The complaint requests monetary damages, including any profits earned by Rothschild from sales, and injunctive relief barring further use of Hermès trademarks, transfer of the metabirkins.com domain, and delivery of any remaining unauthorized products or advertisements for immediate destruction by the company.

This case presents unexplored areas of the fast-growing digital commodities marketplace and is sure to raise questions about novel facets of intellectual property and trademark issues.

To read the full complaint filed in the SDNY, click here.

To read The Fashion Law’s article about the complaint, click here.

To read the Reuter’s article about Judge Jed Rakoff’s decision allowing the complaint to proceed, click here.

To read how André Castaybert PLLC can assist you in trademark and intellectual property litigation, click here.

January 24, 2022

Trade Secrets, by their very nature, are intended to be kept secret and derive value from being undisclosed. However, during the litigation of a trade secret misappropriation case or severance from an employee with whom such secrets were shared, the secret’s owner will need to disclose its nature to allege whatever misappropriation occurred. The timing of that disclosure and the extent to which such information needs to be revealed is the topic of a new article from Jones Day, “Navigating Trade Secret Identification During Discovery: Timing & Scope.”

Most trade secret cases are brought at the state level, under the jurisdiction’s specific state version of the Uniform Trade Secrets Act (UTSA) of 1979. Federal cases fall under the Defend Trade Secrets Act (DTSA) of 2016, but because the federal law does not preempt the UTSA, such claims are often brought under both the UTSA and the DTSA. State and federal laws are silent on procedural requirements for the timing and disclosure of such information, leaving questions about how trade secrets should be disclosed during discovery and at what point in the discovery process they should be addressed.

Often, the decision is left to the judge and can vary even from other trade secret cases within the same jurisdiction. Some judges will require disclosure before formal discovery has begun, while others will permit disclosure at any point during the discovery phase of trial. The required scope of the disclosure is another matter left up to the jurisdiction and individual judge. While some jurisdictions provide a codified standard of what constitutes sufficient scope, others have not adopted such a definition.

Ultimately, it is important to consider the requirements for disclosure of trade secrets in the jurisdiction in which you will be filing. Plaintiffs with questions about misappropriated information may choose to file in a jurisdiction that does not require disclosure until later in discovery, while defendants should research jurisdiction-specific requirements, so they know when and how hard to push for disclosure of secret information. Despite the lack of a unified approach for dealing with trade secret disclosure during trial, there has been a trend toward disclosure earlier in fact discovery. Parties should be aware of the tendencies for disclosure or requirements in their jurisdiction before filing, and be prepared to disclose trade secret information in the most favorable light for their position in litigation.

To read the complete article from Jones Day, written by Nathaniel Garrett, Andrea Weiss Jeffries, Michael Oblon, Cary Sullivan, and Ryan Walsh, click here.

To read how André Castaybert PLLC can assist you with trade secret matters, click here.