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.

November 28, 2021 –

Seyfarth’s legal blog, Trading Secrets, offers insights into Trade Secrets, Non-Competes, and Computer Fraud. Their recent post, by Alex Meier, questions whether or not you want a jury trial in a non-compete or trade secrets case and highlights important considerations to make before moving forward with a request for a jury trial.

Though Meier acknowledges the moral underpinnings coloring the average citizen’s decisions that could prove beneficial in a Trade Secrets or Non-Compete case, he notes the pros of a bench trial, particularly the speedier decision that can come when injunctive relief and recovery of attorney’s fees are the client’s top priorities.

To read the full article from Seyfarth’s Trading Secrets, click here.

To read how Castaybert PLLC can assist you with Trade Secret and Non-Compete matters, click here.

November 28, 2021 –

DE Court’s Decision Limits Former Directors’ Access to Privileged Information:

Ballard Spahr LLP published an article on JD Supra about a recent Delaware Chancery Court decision to block access to privileged communications, between a corporation and its counsel, from former directors in their personal claims against the corporation.

The article, “Delaware Court Limits Former Directors’ Access to Privileged Information” by R. Lindsey and David Margules of Ballard Spahr, notes the exceptions to Delaware’s standard of holding director access to information as “essentially unfettered.” Kalisman v. Friedman (Del. Ch. Apr. 17, 2013).

Among the exceptions to the standard access are instances where:

• A contract limiting access exists;
• There exists a special committee, of which the director is not a member, and which retains separate counsel; and
• “…sufficient adversity exists between the director and the [entity] such that the director could no longer have a reasonable expectation that he was a client of the board’s counsel.” SerVaas v. Ford Smart Mobility LLC (Del. Ch. Nov. 9, 2021) at 6.

In deciding the current SerVaas case, the Court applied this new third exception, noting an inconsistency between granting director information rights to a former employee pursuing a breach of contract claim against the corporation.

To read the JD Supra post from Ballard Spahr LLP, click here.

To read the opinion of the Delaware Chancery Court, click here.

To read how Castaybert PLLC can assist you in employment matters involving privileged communications, click here.

October 29, 2021-

Floyd Abrams’s Important  NYT Guest Essay Warns that the Supreme Court “Faces a Huge Test on Libel Law”

An October 22^nd Op Ed in the New York Times by Floyd Abrams, a First Amendment lawyer whose firm occasionally represents the newspaper, highlights a test of libel law facing the Supreme Court as they hear appeals in two recent libel cases and consider whether the First Amendment protects such speech or conduct.

Justices Clarence Thomas and Neil Gorsuch have expressed a readiness to reconsider the landmark 1964 decision of the Supreme Court in New York Times v. Sullivan.

In Sullivan, the Supreme Court barred public officials from recovering damages for “defamatory falsehoods” related to their official conduct without clear and convincing evidence that the statements were made with “actual malice” and made with the “knowledge that it was false or with reckless disregard of whether it was false or not.”   The Court’s decision reinforced our nation’s commitment to the free and open debate of public issues and affirmed the importance of uninhibited dialogue in the discussion of such issues. SCOTUS also stressed that, “Erroneous statement is inevitable in free debate” and “must be protected if the freedoms of expression are to… survive.”

Abrams’s article goes on to contrast libel cases in the United States from those in England, pointing out the lack of libel protections in England.  Abrams explains that, in England, “a defendant could be libel for a false statement even if he was unaware that it was false” and subject to stiff sanctions. The Sullivan decision protects against these exact issues here in the US, where the burden of proof is on the plaintiff to prove a statement was false.

Abrams’s  Op Ed sheds light on libel protections that would be jeopardized if Sullivan were overturned. With two justices already expressing reconsideration of the ruling, it seems the First Amendment protections acknowledged by the Court in 1964 remain in fragile limbo.

To read the full essay by Floyd Abrams in the New York Times, click here.

To read the amicus brief mentioned in the article that the New York Times joined in support of the defendants, click here.

October 29, 2021-

FTC Warning and Stricter Enforcement of §5 of the FTC Act Regarding Deceptive Online Endorsements

According to Proskauer, a new warning from the Federal Trade Commission has been sent to more than 700 companies and shows a move toward stricter enforcement of §5 of the FTC Act. Recipients of the FTC’s Notice of Penalty Offenses Warning were told to cease the use of deceptive endorsements in online advertising, conduct previously determined by the FTC to be unfair and unlawful or deceptive.

Companies in breach face civil liability penalties of up to $43,792 per violation.

Among the 700+ companies to receive the warning were major retailers and advertising agencies. Recipients were told to forward the warning to subsidiary companies engaged in the sale or marketing of products or services to US consumers. Though none of the companies to receive notice warnings are alleged to have engaged in any wrongdoing, the FTC has made clear that it is focused on cracking down on deceptive endorsements in online marketing and will vigorously pursue advertisers who violate the terms of §5.

The Notice provided a non-exhaustive list of previously determined unlawful practices, including:

• Falsely claiming an endorsement by a third party;
• Misrepresenting whether an endorser is an actual, current, or recent user;
• Using an endorsement to make deceptive performance claims;
• Failing to disclose an unexpected material connection with an endorser;
• Misrepresenting that an endorsement represents the experience, views, or opinions of users or purported users;
• Misrepresenting that the experience of endorsers represents consumers’ typical or ordinary experience; and
• Continuing to use an endorsement without good reason to believe that the endorser continues to subscribe to the views presented.

Avoiding the practices outlined above, in addition to reviewing the FTC’s guidelines concerning the use of endorsements and testimonials in advertising will mitigate the risk of facing an FTC liability.

To read the full article from Proskauer, written by Lawrence Weinstein, Jeffrey Warshafsky, and Jessica Griffith, click here.

To read the FTC’s Guides Concerning the Use of Endorsements and Testimonials in Advertising, click here.

To read how CASTAYBERT PLLC can help you with Advertising and Marketing Law, click here.

Jan. 1, 2022 — André Castaybert, principal attorney at Castaybert PLLC, has received a “Preeminent” AV rating in ethical standards and legal ability from the 2022 Martindale-Hubbell peer review.  This is the highest possible honor that Martindale-Hubbell can bestow upon an attorney.  This marks 9 consecutive years that André has received this award.

Jan. 1, 2021- André Castaybert, principal attorney at Castaybert PLLC, has received the highest possible rating from Lawyers.com for their 2021 peer ratings in both Legal Ability and Ethical Standards. The ratings are monitored by Martindale-Hubbell, the world’s most trusted legal resource. 

Jan. 1, 2020 — André Castaybert, principal attorney at Castaybert PLLC, has received a “Preeminent” AV rating in ethical standards and legal ability from the 2020 Martindale-Hubbell peer review.  This is the highest possible honor that Martindale-Hubbell can bestow upon an attorney.  This marks 7 consecutive years that André has received this award.