HERMES INTERNATIONAL and HERMES OF PARIS, INC. v. "MASON ROTHSCHILD" a/k/a SONNY ESTIVAL

SOUTHERN DISTRICT OF NEW YORK                                               

HERMÈS INTERNATIONAL and                                                   
HERMÈS OF PARIS, INC.,                                                     
                                       22-cv-384 (JSR)                     
          Plaintiffs,                                                      
                                       OPINION AND ORDER                   
     -against-                                                             

MASON ROTHSCHILD,                                                          

          Defendant.                                                       


JED S. RAKOFF, U.S.D.J.:                                                    
    After a nine-day trial, an eight-person civil jury returned a          
unanimous  verdict  against  the  defendant,  “Mason  Rothschild”  (real    
name:  Sonny  Estival),  finding  him  liable  on  all  three  counts  of   
trademark   violation  and   awarding   the  plaintiffs   --  Hermès        
International and Hermès of Paris, Inc. (collectively, “Hermès”) --         
$133,000 in damages.1 As the jury expressly found, Rothschild, a self-      
described “marketing strategist,” purposely sought (with some success)      
to  confuse  consumers  into  believing  that  his  non-fungible  tokens    
(“NFTs”),  labeled   “MetaBirkins,”  and   his  associated  website,        
“metabirkins.com,”  were  affiliated  with  Hermès’  iconic  “Birkin”       
trademarks. While the Court instructed the jury that even the modest        

    1 In its discussion of the post-trial motions, the Court assumes       
familiarity with the facts of this case as evidenced at trial and as        
described in detail in this Court’s order denying the parties’ cross-       
motions for summary judgment. See Hermès v. Rothschild, 

2023 WL 1458126

     
at *1-3 (S.D.N.Y. Feb. 2, 2023). Also, all capitalized terms here used      
refer to the definitions set forth in that Order, unless otherwise          
specified.  All  internal  quotation  marks,  alterations,  omissions,      
entitled him to total First Amendment protection against Hermès’ claims     
unless Hermès proved that Rothschild intentionally misled consumers         
into believing that Hermès was backing its products, the jury had no        
difficulty in concluding that Hermès had so proved. In effect, the          
jury found that Rothschild was simply a swindler.                           
    This Opinion addresses the post-trial motions that the parties         
filed following the jury’s verdict. The defendant asks that the Court       
enter judgment as a matter of law in his favor pursuant to Federal          
Rule of Civil Procedure 50(b), or, in the alternative, order a new          
trial pursuant to Federal Rule of Civil Procedure 59(a). In a separate      
motion, Rothschild also requests leave to interview the foreperson of       

the jury and up to four other jurors in light of what he claims to be       
“the  substantial  possibility  that  the  jurors  considered  material,    
prejudicial, and erroneous information outside the record in reaching       
their verdict.” Dkt. No. 170. Plaintiffs, in their sole motion, seek        
to personally enjoin Rothschild from taking certain actions that, in        
plaintiffs’ view, have enabled him to continue infringing and diluting      
their trademarks.                                                           
    The Court will first address Rothschild’s request for a judgment       
of law in his favor or for a new trial; next, the plaintiffs’ petition      
for a permanent injunction; and finally, the defendant’s request to         
interview the jury. For the following reasons, the Court hereby denies      
both of the defendant’s motions and enters a permanent injunction           

against the defendant, the terms of which are detailed in an order          
Injunction Order”).                                                         
  I.  The Defendant’s Motion for Judgment as a Matter of Law or for        
      a New Trial                                                          

    In  his  first  motion,  Rothschild  asks  this  Court  to  declare    
judgment in his favor as a matter of law under Rule 50(b) or, in the        
alternative, to order a new trial under Rule 59(a). Judgment as a           
matter of law under Rule 50(b) is warranted only where there is “a          
complete  absence  of  evidence  supporting  the  verdict”  such  that      
“reasonable  and  fair  minded  [persons]  could  not  arrive”  at  that    
verdict. Brady v. Wal-Mart Stores, Inc., 

531 F.3d 127, 133

 (2d Cir.         
2008). To order a new trial under Rule 59(a), the Court “must conclude      
that the jury has reached a seriously erroneous result or . . . [that]      
the verdict is a miscarriage of justice” when viewed “against the           
weight of the evidence.” Manley v. AmBase Corp., 

337 F.3d 237, 245

 (2d      
Cir. 2003).                                                                 
    Both of these possibilities must, moreover, be weighed against         
the respect that our federal constitution gives to juries. Indeed, a        
hallmark of the American legal system is its entrusting to everyday         
citizens the primary responsibility of resolving not only criminal but      
also civil disputes -- on the theory (well-supported in this Court’s        

view) that ordinary citizens are best suited to determine where justice     
lies in such disputes. It follows that a jury’s verdict should not be       
lightly overturned.                                                         
    Rothschild’s primary argument on his first motion is that the          
jury could not properly perform their function because the instructions     
they were given by the Court were legally deficient. However, jury          
instructions are legally deficient -- and thus may serve as the basis       
for judgment as a matter of law or a new trial -- only where the            
instructions, “viewed as a whole, either failed to inform the jury          
adequately of the law or misled the jury about the correct legal rule.”     
United  States  v.  White,  

552 F.3d 240, 246

  (2d  Cir.  2009).  Here,   
Rothschild argues, the Court’s legal instructions to the jury were          
inconsistent with Second Circuit law, both in how they were structured      
and in their substance. But neither argument is remotely supported by       

the record in this case or by applicable law.                               
    i.   The Structure of the Court’s Instructions to the Jury Was         
         Totally Proper                                                    

    Rothschild  first  posits  that  the  sequencing  of  the  Court’s     
instructions -- which directed the jury to first determine whether          
Hermès had proved each of the essential elements of its three trademark     
claims before it considered whether Hermès had also proved that the         
First Amendment did not protect Rothschild from liability -- misled         
the jury into viewing the First Amendment as a “defense” or “excuse”        
to liability. In his view, the jury’s determination that he had broken      
the law at the first step of the Court’s instructions made them (he         
hypothesizes)  “reluctant  to  find  that  the  First  Amendment  .  .  .   
released [him] entirely from the consequences of what they viewed as        
below, the straightforward structuring of the Court’s instructions was      
entirely proper.                                                            
    Indeed, Hermès argues, this was so evident even to Rothschild’s        
counsel that, at the charging conference, he expressly waived the           
structural argument on which he now relies. Specifically,  after making     
this  argument  during  the  charging  conference,  defense  counsel,  in   
response to wording changes the Court then made, expressed his consent      
to the newly worded instruction, including its placement, stating that      
he was now “satisfied with [the instruction].” See Dkt. No. 159 at          
901:14-21. Defendant, for his part, argues that he only agreed to the       
wording  of  the  revised  instruction,  but  not  to  the  order  of  its  

placement. But the Court need not resolve this dispute because, even        
assuming that there was no waiver, the defendant’s argument    about        
structure has no merit.                                                     
    This is because the most logical way to structure the instructions     
was precisely the way the Court did it. Specifically, the Court first       
instructed  the  jury  about  the  essential  elements  of  plaintiffs’     
trademark claims, then instructed the jury that, if plaintiffs failed       
to prove any of these elements, that alone was sufficient to deny           
plaintiffs’  claims  and  that,  even  if  plaintiffs  did  prove  these    
elements, the plaintiffs, as part of their burden, must also prove          
that defendant’s conduct was not shielded by First Amendment protection     
of artistic expression.                                                     
Amendment protection as a “defense” or “excuse” to liability. On the        
contrary, the Court -- at the insistence of Rothschild’s counsel --         
revised its instructions to clarify that the First Amendment was not        
a defense and that, as a result, the “burden remain[ed] with [Hermès]       
at all times” to prove that Rothschild’s NFTs did not fall within the       
Amendment’s scope. Dkt. No. 157 at 849:20-23. And it was after this         
change that defense counsel stated his consent to the instruction.          
    Other than rank speculation, defendant’s only “evidence” that the      
jury nonetheless misinterpreted the Court’s explicit instruction that       
the plaintiffs could not recover unless they proved that Rothschild’s       
images were not entitled to First Amendment protection rests on his         

interpretation of the jury’s first note -- in which the jury asked the      
Court whether Rothschild would be able to continue selling the NFTs         
if they found him non-liable on First Amendment grounds. The defendant      
interprets this note to mean that the jury was “reluctant” to find          
that the First Amendment protected his “law-breaking” behavior. Def.        
Br. at 1. But even putting aside for a moment the highly speculative        
nature of this argument, Rothschild only tells half of the story.           
Following receipt of the note, the Court -- with both sides’ consent        
-- instructed the jury to focus exclusively on whether Hermès had           
proved that Rothschild’s “MetaBirkins NFTs” were not entitled to First      
Amendment  protection  and  to  disregard  any  consequences  that  would   
attach to their determination. There is no reason to think that the         

jury did not heed this clear instruction.                                   
challenge to the jury instructions is a short comment made by a jury        
member on a social media platform following the verdict. In response        
to another user on the platform LinkedIn, one of the jurors opined          
that legitimate digital artists would have “no need to hide under the       
cloak of the 1st amendment” so long as they kept in mind “the goodwill      
of the brand and the consumer in mind.” See Dkt. No. 174, Exh. D.           
    In so stating, the juror in effect accurately predicted what the       
Supreme  Court  would  hold  a  few  months  later,  in  Jack  Daniel’s     
Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023),       
where the Court, unanimously overruling the Ninth Circuit’s conclusion      
that “the First Amendment compels a stringent threshold test when an        

infringement suit challenges a so-called expressive work,” held that        
such a threshold inquiry “is not appropriate when the accused infringer     
has used a trademark to designate the source of its own goods -- in         
other  words,  has  used  a  trademark  as  a  trademark.”  Jack  Daniel’s  
Properties, No. 22-148, slip op. at 2. This, of course, is precisely        
what  the  defendant,  with  his  “MetaBirkins”  NFTs  and  “MetaBirkins”   
website, did here.                                                          
    ii.  The Substance of the Court’s Jury Instructions Was Entirely       
         Correct                                                           

    Rothschild, in addition to his challenge to the Court’s sequencing     
of  its  instructions,  also  asserts  that  these  instructions  were      
substantively deficient because they misstated the law. Rothschild’s        
structural argument.                                                        
    At the outset, here again, there is a substantial argument by          
plaintiffs that the defendant waived this objection at the charging         
conference  by  stating,  after  the  Court  had  made  certain  changes    
requested by defendant, that it was now satisfied with the relevant         
instruction (Instruction No. 14). But, once again, the Court need not       
resolve the issue of waiver because, even if there were no waiver, the      
Court’s instructions were, if anything, more favorable to the defendant     
than the law even required.                                                 
    Specifically, under the Second Circuit’s decision in Rogers v.         
Grimaldi, 

875 F.3d 994

 (2d Cir. 1989), the First Amendment requires         

dismissal of an infringement claim brought against a work containing        
some degree of “artistic expression” unless the challenged use of the       
mark “has no artistic relevance to the underlying work” or “explicitly      
misleads as to the source of or the content of the work.” Rogers, 875       
F.3d at 999.                                                                
    Whether the Rogers test even properly applies to a case like this      
one has now been cast in doubt by the aforementioned recent decision        
of the U.S. Supreme Court in Jack Daniel’s Properties, where the Court      
stated that: “Without deciding whether   Rogers has merits in other         
contexts, we hold that it does not when an alleged infringer uses a         
trademark in the way the Lanham Act most cares about: as a designation      
of source for the infringer’s own goods.” Jack Daniel’s Properties,         

slip op. at 10. This, of course, is precisely what Rothschild did           
labeled  “MetaBirkins  NFTs.”  The  references  to  Hermès’  registered     
“Birkin” trademarks were thus explicit and central to Rothschild’s          
venture.                                                                    
    But not yet having the benefit of Jack Daniels Properties, this        
Court in the instant case not only applied Rogers, but also applied         
it in a way highly favorable to the defendant. Specifically, the Court      
first instructed the jury that the MetaBirkins NFTs were “in at least       
some respects” works of artistic expression as a matter of law. See         
Dkt.  No.  167  at  14.  Then,  as  to  the  alternative  possibility  that 
defendant’s use of the Birkin trademarks was explicitly misleading,         
this Court went even further in defendant’s favor than Rogers arguably      

required  by  defining  “explicitly  misleading”  to  mean  not  only       
objectively misleading but also intentionally misleading. Thus, the         
Court instructed the jury that Rothschild could not be found liable         
for any of Hermès’ claims unless Hermès proved that the defendant           
“actually intended to confuse potential customers into believing that       
Hermès was associated” with his NFT project. Id.                            
    In other words, by defining “explicitly misleading” to include         
an intent to mislead, the Court actually accorded Rothschild greater        
First  Amendment  protection  that  Rogers  arguably  required.2  The       
defendant’s arguments to the contrary express little more than his          


    2 The Court based this extension of Rogers largely on its reading      
of the Second Circuit’s post-Rogers decision in Twin Peaks Productions,     
form of artistic expression is included. Even under Rogers, this was        
never the law, let alone under Jack Daniel’s Properties. And this           
Court’s jury instructions, if anything, went further in defendant’s         
direction than the law required. His protestations to the contrary          
thus ring hollow.                                                           
    It remains only to add that if the jury found -- as they did here      
-- that Rothschild did use Hermès’ marks with an intent to deceive,         
any claim he might have to First Amendment protection was waived. For       
nothing could be better established than that the First Amendment does      
not eliminate liability for intentional fraud. See Illinois ex rel.         
Madigan v. Telemarking Assocs., 

538 U.S. 600, 612

 (2003) (“[T]he First      

Amendment does not shield fraud.”). Defendant’s entire scheme here was      
to  defraud  consumers  into  believing,  by  his  use  of  variations  on  
Hermès’  trademarks,   that  Hermès  was   endorsing  his  lucrative        
MetaBirkins NFTs. Nothing in the First Amendment insulates him from         
liability for such a scheme.                                                
    Rothschild nonetheless argues that the jury instructions were          
defective  because  they  did  not  attempt  to  distinguish  between       
“[Rothschild’s] intent upon adopting the mark and whatever his [intent]     
might have been after adopting the mark.” Def. Br. at 4. This permits       
the possibility, according to Rothschild, that   the jury  based  its       
decision on Rothschild’s developing his fraudulent intent only after        
he first incorporated Hermès’ trademarks into his work. This argument       

is, however, doubly mistaken. To begin with, Hermès did not contend         
adoption  of  its  trademarks  was  relevant.  Instead,  even  where  the   
plaintiffs introduced evidence of events that took place after the          
creation of the NFTs   -- including Rothschild’s alleged failure to         
mitigate  confusion  among  potential  consumers  --  they  offered  such   
evidence as corroboration of Rothschild’s bad faith intent at the time      
of the mark’s adoption. Likewise, Rothschild himself offered evidence       
of events that took place after adoption -- namely, his attempts to         
tell media outlets that there was no connection between Hermès and the      
MetaBirkins NFTs -- as evidence of his artistic intent at the time of       
adoption.                                                                   
    In  any  case,  as  far  as  trademark  infringement  and  the  First  

Amendment is concerned, there is little difference between an intent        
to confuse at the time of adoption of the mark and after its adoption.      
In the Rogers context, the relevant question is whether Rothschild          
intended to “induce members of the public to believe the [artwork] was      
prepared or otherwise authorized by [the trademark holder].” See Twin       
Peaks, 996 F.2d at 1379 (2d Cir. 1993). The object of the intent            
standard is to figure out if Rothschild used the mark to exploit the        
goodwill of Hermès or, instead, to advance an artistic purpose. It          
makes no difference if he had decided to exploit that goodwill at the       
time of adoption or, later on, when he realized that consumers were         
confused about an association between the parties. See Car-Freshner         
Corp. v. Am. Covers, LLC, 

980 F.3d 314, 333

 (2d Cir. 2020) (“Bad faith      

and intent to deceive are relevant to the extent that they add to the       
consumer confusion.”). In both cases, he is either using the marks to       
exploit Hermès’ goodwill, or he is not.                                     
    B. A Reasonable Juror Could Find On this Record that Rothschild        
      Was Liable for Hermès’ Trademark Claims                              
    Rothschild  further  argues  that,  even  assuming  he  intended  to   
deceive consumers into believing Hermès was endorsing his products,         
no reasonable jury could have found that he was liable on Hermès’           
trademark  claims  after  applying  the  traditional  Polaroid  factors.    
Polaroid Corp. v. Polarad Elecs. Corp., 

287 F.2d 492

 (2d Cir. 1961).        
Once again, the Court does not find this argument remotely persuasive.      
    To begin with, Rothschild challenges only the evidence that Hermès     
presented in support of its argument for actual confusion, neglecting       
most of the evidence that Hermès offered on the other Polaroid factors.     
This includes, for example, the similarities between the design of the      
Birkin handbag and the MetaBirkins NFTs; testimony that confirms the        
Birkin  bag’s  distinctive  place  in  American  cultural  life;  and       

statements suggesting that  Hermès  intended to “bridge the gap” by         
entering the NFT space. Even assuming (contrary to fact) that the           
evidence of actual confusion in this case was insufficient, “actual         
confusion need not be shown to prevail under the Lanham Act,” and a         
reasonable juror could have found him liable because the other Polaroid     
factors weighed heavily against him. Lois Sportswear, U.S.A. Inc. v.        
Levi Strauss Co., 

799 F.2d 867, 875

 (2d Cir. 1996).                         
the study conducted by Hermès’ expert, Dr. Bruce Isaacson, was itself       
sufficient to show actual confusion. See e.g., Lon Tai Shing Co., Ltd.      
b. Koch-Lowy, 

1992 WL 18806

, *3 (S.D.N.Y. Jan. 28, 1992) (finding that      
a survey showing at least 18% of respondents reflected actual consumer      
confusion “satisfies the necessary threshold for determining actual         
confusion in this Circuit.”). The survey, moreover, was not the only        
item  that  Hermès  submitted  as  evidence  of  actual  confusion.  In     
particular,  Hermès  also  submitted  evidence  that  several  fashion      
magazines, such as Elle and L’Officel, mistook the MetaBirkins NFTs         
as Hermès’ foray into the NFT market.3                                      
    Without multiplying examples further, it is clear that the jury        

had before them ample evidence of trademark infringement under the          
Polaroid factors.                                                           
    C. Rothschild’s Remaining Grounds For His Motion Fail                  
    Rothschild’s remaining grounds for judgment as a matter of law         
or a new trial are resolved against him as follows.                         
    First, Rothschild raises no new arguments in his submission about      
the admissibility of Dr. Blake Gopnik’s expert testimony and the Court      
reaffirms its decision to exclude the defendant’s expert witness. In        


    3  Though  courts  are  in  dispute  over  whether  this  sort  of     
misattribution  evidence  can  be  asserted  as  evidence  of  actual       
confusion,  it  can  --  with  less  controversy  --  be  introduced  as    
circumstantial  evidence  of  the  likelihood  of  confusion,  another      
related Polaroid factor. See Alzheimer's Disease & Related Disorders        
Ass'n, Inc. v. Alzheimer's Found. of Am., Inc., 

307 F. Supp. 3d 260

,        
have a recognizable, describable methodology that he used to reach his      
conclusions. See, e.g., Fernandez Decl. to Plfs. Motions in Limine          
Submission, Ex. 2 at 95:15-21 (providing excerpt in which Dr. Gopnik        
says, “[t]here’s no consensus among art historians about anything,          
including whether the Mona Lisa is art, so there cannot be a consensus      
on fur-covered Birkin bags”); id. 98:25-28 (providing another excerpt       
in which Dr. Gopnik describes his methodology for determining whether       
a given piece of art falls within the Business Art tradition as looking     
at a “larger set of contextual clues that tell you, oh, this might be       
worth looking at as an artist activity.”).                                  
    In any case, any error here was harmless since, as already noted,      

the Court instructed the jury as a matter of law that Rothschild’s          
products contained an element of artistic expression.                       
    Second, the Court also declines to reconsider its decision that        
the Supreme Court’s Dastar decision does not bar Hermès’ claim. The         
reasoning for that conclusion is laid out in detail in the Court’s          
prior opinion in Hermès Int’l v. Rothschild, 

590 F. Supp. 3d 647

, 654-      
56 (S.D.N.Y. 2022). And, of note, the logic of the Court’s decision         
has  recently  been  adopted  verbatim  by  a  sister  district  court      
encountering the same issue involving NFTs. See Yuga Labs, Inc. v.          
Ripps, 

2023 WL 3316748

 (C.D. Cal. Apr. 2, 2023).                            
    Third, the Court finds no error in the jury’s decision to find         
Rothschild liable not just for trademark infringement, but also for         

trademark  dilution  and  cyber-squatting.  With  respect  to  trademark    
Rogers test does apply to trademark dilution claims in this Circuit.        
See AM General, 450 F. Supp. 3d at 488. Indeed, until the defendant         
filed this motion, he agreed with this position. See Dkt. No. 27, Def.      
Br. in Support of Mot. to Dismiss at 22 (“Rogers applies to Hermès’         
dilution claims”). And here, the jury, applying the Court’s very pro-       
defendant interpretation of Rogers, determined that Hermès had proved       
that Rothschild, by purposely intending to confuse consumers, did not       
qualify  for  any  First  Amendment  protection  under  Rogers.  Thus,      
Rothschild’s  use  of  Hermès’  trademarks  do  not  qualify  as  First     
Amendment protected speech that is exempt from anti-dilution laws,          
even as that term is described under the out-of-circuit precedent           

Rothschild cites. See Mattel, Inc. v. MCA Recs., Inc., 

296 F.3d 894, 903

 (9th Cir. 2002).                                                        
    Rothschild’s request to invalidate the jury’s verdict on cyber-        
squatting is even more quixotic. Rothschild denies liability on this        
count because he claims to have had “reasonable grounds to believe          
that the use of this domain name was lawful . . . and he was acting         
within his legal rights under the First Amendment in promoting his          
artwork” on his website. But, as the Court has already explained, the       
jury found that Rothschild waived his First Amendment protection, even      
assuming,  arguendo,  that  he  ever  had  such  protection  against  a     
trademark claim of this kind -- a position subsequently rejected by         
the U.S. Supreme Court in Jack Daniel’s Properties, No. 22-148 (U.S.        

2023). Given that the jury in its verdict found that Rothschild used        
marks, it would be entirely reasonable for that same jury to also find      
that Rothschild knew using the domain name was unlawful.                    
    In conclusion, for all the foregoing reasons, the Court declines       
to grant Rothschild judgment as a matter of law or grant him a new          
trial.                                                                      
  II.  The Plaintiffs’ Motion for a Permanent Injunction                   

    Turning  to  Hermès’  motion  for  a  permanent  injunction,  Hermès   
alleges  that  Rothschild  “continues  to  promote  the  sale  of  the”     
MetaBirkins NFTs “while also seeking to collect a royalty for these         
sales.” Plfs. Br. at 5. His efforts, according to the plaintiffs,           
include promoting the MetaBirkins NFTs on social media platforms and        
continuing to list the NFTs for sale on different marketplaces. 

Id.

         
These allegations are not disputed by any contrary evidence offered         
by defendant.                                                               

    On the basis of these undisputed facts, the plaintiffs ask this        
Court to enjoin Rothschild from taking actions that have, in their          
view, enabled him to continue infringing and diluting their trademarks.     
Specifically, they request that the Court order Rothschild to do the        
following seven things. First, to discontinue his use of the “Birkin”       
marks  and  generally  refrain  from  misleading  the  public  about  an    
association between his NFT project and Hermès. Second, to transfer         
the  metabirkins.com  domain  name  and  related  social  media  accounts   
featuring the Birkin mark to Hermès. Third, to transfer any MetaBirkins     
each NFT, to a “cryptocurrency wallet” designated by Hermès. Fourth,        
to notify Hermès of any income received from the MetaBirkins NFTs and       
transfer that income to Hermès. Fifth, to notify anyone who purchased       
a MetaBirkins NFT of the relief described in the permanent injunction,      
assuming one is issued. Sixth, to file a declaration confirming his         
compliance with the permanent injunction within thirty-one days of the      
Court’s entry of its order. And seventh, to preserve documents that         
relate to this lawsuit.                                                     
    To show that it is entitled to any form of injunctive relief,          
Hermès  must  first  satisfy  the  four  requirements  set  forth  by  the  
Supreme  Court  in  eBay  Inc.  v.  MercExchange,  L.L.C.,  

547 U.S. 388

  

(2006).4 To wit, Hermès must clearly show “(1) that it has suffered an      
irreparable  injury;  (2)  that  remedies  available  at  law,  such  as    
monetary damages, are inadequate to compensate for that injury; (3)         
that, considering the balance of hardships between the plaintiff and        
defendant, a remedy in equity is warranted; and (4) that the public         
interest would not be disserved by a permanent injunction.” eBay, 

547 U.S. at 391

. The Court finds that Hermès has carried this burden.           
    As  to  eBay’s   first  requirement,  Hermès  has  proved  that        
Rothschild’s ongoing conduct would inflict irreparable injury on it         
absent  injunctive  relief.  

Id. at 391

.  Because  of  the  Trademark     


    4 Though eBay was decided in a patent infringement setting, it is      
well-established  that  the  four-part  test  it  sets  forth  is  “the     
presumptive standard for injunctions in any context.” See Salinger v.       
rebuttable presumption of irreparable harm” by   virtue of the jury         
verdict in its favor on its trademark infringement claim. See 

15 U.S.C. § 1116

(a) (“A  plaintiff seeking [a permanent injunction] shall be          
entitled to a rebuttable presumption of irreparable harm upon a finding     
of a violation identified in this subsection in the case of a motion        
for a permanent injunction.”). Similarly, as to Hermès’ dilution claim,     
courts have long assumed that success (as here) on the merits of such       
a claim implies that an irreparable harm has been and continues to be       
inflicted on the plaintiff, “based on the ensuing loss of goodwill and      
ability to control one’s reputation.” Gucci America, Inc. v. Guess?,        
Inc., 

868 F. Supp. 2d 207, 243

 (2012).                                      

    Rothschild’s primary response is that the TMA presumption only         
shifts the “burden of production” to him, and that he has met that          
burden, thereby shifting the “burden of persuasion” to Hermès -- a          
burden Rothschild claims Hermès has failed to satisfy. The meaning of       
the TMA presumption in trademark litigation is, indeed, a subject of        
lively debate among our fellow district courts and sister circuits.         
Some agree with Rothschild that this presumption “shifts [only] the         
evidentiary burden of production,” leaving “the burden of persuasion”       
with the moving party. This position, championed by the Third Circuit,      
finds support in Federal Rule of Evidence 301, which provides that,         
absent statutory language to the contrary, presumptions are assumed         
to “not shift the burden of persuasion, which remains on the party who      

had it originally.” Fed. R. Evid. 301; Nichino Am., Inc. v. Valent          
joins the courts that have taken the opposite view, see, e.g., Guru         
Teg Holding, Inc. v. Maharaja Farmers Mkt., Inc., 

581 F. Supp. 3d 460

       
(E.D.N.Y.  2021).  This  is  because  language  from  the  statute’s        
legislative history and  a careful  consideration of the context in         
which  the statute was enacted  both  strongly  suggest that Congress       
chose to place the burden of persuasion on the proven infringer.            
    Because the meaning of “presumption” in the statute is ambiguous,      
“we may consult” this “legislative history . . . to discern Congress’s      
meaning.” See United States v. Gayle, 

342 F.3d 89

; see generally Robert     
A. Katzmann, Judging Statutes (2014) (mapping the path judges should        
take to undertake a fair examination of legislative history in order        

to   clarify  ambiguous  statutory   language).  The   House  Report        
accompanying the statute is particularly illuminating. Finding that,        
“[h]istorically,  federal  courts  considering  injunctive  relief  for     
trademark infringement claims had nearly uniformly held that success        
on  the  merits  of  a  trademark  claim  .  .  .  created  a  rebuttable   
presumption of irreparable harm that was sufficient to satisfy that         
prerequisite for relief,” the statute aimed to restore that historical      
practice in the face of the “inconsistent and unpredictable approaches      
courts have taken in the post-eBay landscape.” H.R. Rep. No. 116-645,       
at  37.  Given  that  eBay  had  invalidated  the  Federal  Circuit’s       
presumption  “that  courts  will  issue  permanent  injunctions  against    
patent infringement absent exceptional circumstances” -- a presumption      

that clearly modified the burden of persuasion, not just the burden         
ruling in the trademark context makes it reasonably clear that Congress     
intended the TMA presumption to apply with respect to the burden of         
persuasion, and not just the burden of production.                          
    But  even  if  only  the  burden  of  production  were  involved,      
Rothschild has not met the modest showing required to overcome that         
presumption.  Specifically,  Rothschild  insists  that  the  MetaBirkins    
NFTs did not interfere with Hermès’ plans to launch its own project         
because the MetaBirkins NFTs -- unlike Hermès’ planned NFTs -- are not      
products  that  could  be  used  “as  certificates  of  authenticity  to    
customers who purchase physical Hermès products.” Def. Br. at 11. But       
whether  it  is  reasonable  for  consumers  to  confuse  an  association   

between Hermès’ planned NFTs and the “MetaBirkins” NFTs, given the          
differences between the two products, is beside the point. For the          
purpose  of  demonstrating  “irreparable  harm,”  what  matters  is  that   
consumers did mistake an association between Hermès and the MetaBirkins     
NFTs -- a position that Hermès supports with concrete evidence in the       
record -- and that the high likelihood of ongoing confusion generated       
by Rothschild’s continued use of the Birkin mark would strip Hermès         
of the ability to leverage the “goodwill and reputation” of its marks       
to  launch  its  own  profitable  NFT  project.  See  Plfs.  Br.  at  13-14 
(listing evidence); see also Stern’s Miracle-Gro v. Shark Products,         

823 F. Supp. 1077, 1094

 (S.D.N.Y. 1993) (“The existence of likelihood       
of confusion in a trademark case is strong evidence of irreparable          

harm because damage to reputation is difficult to prove or quantify.”);     
trade]mark could dilute and eventually dispel the distinctive quality       
of the [mark, and the goodwill and reputation consumers attached to         
it],” causing irreparable harm).                                            
    Equally fruitless are Rothschild’s efforts to show an absence of       
harm by suggesting limitations in Hermès’ evidence of actual confusion      
and likelihood of consumer confusion. As already noted, Hermès provided     
ample evidence of actual and likely consumer confusion, and this Court      
is not in the position to second-guess the reasoned judgment of the         
jury, which carefully weighed the evidence put forth by both parties        
-- including evidence of actual confusion by media outlets and social       
media users -- and found that there was a sufficiently high likelihood      

of confusion for Lanham Act liability to attach. And in response,           
Rothschild offers nothing but speculation.                                  
    As to  eBay’s second requirement, the Court is   convinced that        
“remedies  at  law,  such  as  monetary  damages,  are  inadequate  to      
compensate [Hermès] for [these] injur[ies].” eBay, 

547 U.S. 388

, 390        
(2006). “[A] plaintiff has no adequate remedy at law,” if it can show       
that,  “absent  an  injunction,  the  defendant  is  likely  to  continue   
infringing its [trademarks].” Int’l Council of Shopping Centers, Inc.       
v. Glob. Infotech LLC, No. 18-CV-8856 (AJN), 

2019 WL 2004096

, at *5         
(S.D.N.Y. May 7, 2019). Rothschild appears to concede this point.           
Rather than identify remedies at law that he believes would compensate      
Hermès for the alleged harms it suffered, Rothschild argues that narrow     

injunctive relief in the form of a disclaimer would suffice to “avert”      
injunctive relief is addressed below. But, for now, the undisputed          
evidence  that  Rothschild  has  continued  to  promote  sales  of  the     
MetaBirkins NFTs on social media platforms and to execute sales on a        
cryptocurrency platform is dispositive of this eBay element. See Plfs.      
Br.  at  15.  Monetary  relief,  Hermès  has  shown,  would  not  fully     
compensate Hermès for the ongoing harms it has suffered by Rothschild’s     
continued use of its trademarks.                                            
    As to eBay’s third requirement, the Court must consider whether        
“a  remedy  in  equity  is  warranted”  after  weighing  the  “hardships    
[suffered by] the plaintiff and the defendant.” eBay, 

547 U.S. at 390

.      
Here, too, Hermès satisfies its burden. On one side of the “hardship”       

ledger, Rothschild identifies supposed harms both to himself and to         
the  NFTs’  third-party  consumers.  First,  he  claims  that  an  order    
enjoining him and anyone who purchased a MetaBirkins NFT from selling       
or  marketing  the  NFTs  would    “eviscerate  [his  and  other  owners]   
prospective First Amendment right to promote and [sell their] . . .         
artworks in a way that does not explicitly mislead as to their source.”     
Def. Br. at 15. And second, he contends that if the Court were to go        
further and order Rothschild to transfer the NFTs’ “smart contracts”        
to Hermès, its injunction would “destroy the property rights of bona        
fide, good faith purchasers of [the NFTs] who are not parties to this       
case.” 

Id.

 On the other end of the ledger, Hermès submits that the          
Court’s failure to grant it such injunctive relief would sanction the       

irreparable harms described in the previous paragraph.                      
irreparable harm absent injunctive relief, it need only evaluate the        
weight of Rothschild’s hardships to complete the analysis. On this,         
the Court agrees with the plaintiffs that Rothschild has not identified     
any cognizable hardship. To begin with, Rothschild cannot claim as a        
hardship the “loss of [his and others’] ability to [sell an] infringing     
product.” Int’l Council of Shopping Centers, Inc., 

2019 WL 2004096

,         
at *5 (S.D.N.Y. 2019). To be sure, Rothschild’s claim here is slightly      
different. He contends that a blanket prohibition on his and others’        
use of Hermès’ trademarks in these works of art -- one that applies         
even when the trademarks are used in a way that is not explicitly           
misleading -- violates his First Amendment right to free expression.        

So, he argues, any injunctive relief entered by the Court cannot,           
consistent  with  the  First  Amendment,  broadly  prohibit  the  use  of   
Hermès’ trademarks, but must be limited to preventing Rothschild and        
others from explicitly misleading the public as to the source of the        
MetaBirkins   NFTs.   A   disclaimer   to   be   displayed  on   the        
www.metabirkins.com  website,  social   media  accounts,  and  other        
platforms,  and  disseminated  to  purchasers  of  the  NFTs  would,  in    
Rothschild’s view, achieve just that.                                       
    The Court rejects this argument. It is at odds both with the           
jury’s  determination   that  Hermès  proved   that  Rothschild  had        
intentionally waived his First Amendment protection under Rogers and        
with Second Circuit caselaw on equitable remedies in the trademark          

context. It will be recalled that the jury determined that Hermès had       
Birkin mark . . . was intentionally designed to mislead potential           
consumers  into  believing  that  Hermès  was  associated  with  Mr.        
Rothschild’s MetaBirkins project.” Dkt. No. 143 at 21 (emphasis added).     
Here, the words “intentionally designed” do considerable work. They         
represent  the  jury’s  determination  that  Rothschild  labeled  and       
designed his NFTs in the way that he did -- that is, through use of         
Hermès’ marks -- intending to exploit the goodwill and reputation of        
Hermès.  In  other  words,  the  MetaBirkins’  very  name  and  form  are   
intertwined with his intent to confuse, and he thus “waived any First       
Amendment protection” as to the project itself, and not just as to the      
particular ways in which he marketed and sold the MetaBirkins NFTs.5        

Even if one were to suppose that there was some ambiguity in the jury’s     
verdict that permits Rothschild to show that his continued use of the       
marks is not “explicitly misleading,” it is not clear how he would          
meet this burden. Rothschild would somehow have to show that, though        
his purpose in using Hermès’ marks stemmed from an intent to deceive,       
he  has,  on  reflection,  decided  to  use  the  marks  as  part  of  a    
communicative message. This strikes the Court as highly implausible.        
And so, with his First Amendment protection with respect to the project     



    5 Of course, plaintiffs are correct to observe that Rothschild is      
free to sell or market NFTs that do not generate a likelihood of            
confusion among potential consumers. But, in their present form, the        
jury  determined  that  the  MetaBirkins  NFTs  were  likely  to  confuse   
consumers as to that association.                                           
right to free expression.                                                   
    To be sure, this logic does not apply to good faith purchasers         
of the MetaBirkins NFTs, who were not subject to the jury verdict. It       
is worth noting, however, that the third eBay factor (balancing of          
hardships)  normally  does  not  contemplate  addressing  the  hardships    
borne by third parties: it demands that courts consider the propriety       
of injunctive relief in view of its potential impact on the parties         
alone. See eBay, 

547 U.S. at 391

 (“A plaintiff seeking a permanent          
injunction must [show] . . . that, considering the balance of hardships     
between the plaintiff and defendant, a remedy in equity is warranted.”      
(emphasis added)).                                                          

    But  even  putting  this  objection  aside,  Rothschild  has  not      
identified any cognizable hardship to third parties that would stem         
from the requested injunction. Hermès nowhere requests that the Court       
order these bona fide purchasers to transfer their NFTs to the company,     
but  only  that  Rothschild  so  transfer  his  remaining  NFTs.  Nor  do   
plaintiffs ask that the Court bar their purchasers from displaying          
their  purchases.  And  in  any  event,  the  Court  would  not  enter  an  
injunction with these terms. The proposed order only asks that the          
Court order Rothschild and his associates to transfer their remaining       
NFTs  (including related smart contracts) to Hermès and to refrain          
from misleading the public about an association between Hermès and the      
MetaBirkins NFT project.                                                    
parties’ First Amendment rights would be “eviscerate[d]” by a Court         
order directing Rothschild to transfer the “smart contract” of each         
NFT to the company.6 This is because Hermès, if it were to receive a        
“smart contract” from Rothschild, would presumably alter the NFTs’          
smart contract so that the NFTs are not linked to digital images of         
Birkin bags. But Rothschild’s concern is obviated by the fact that,         
for different reasons later discussed, the Court declines to order          
Rothschild to transfer the MetaBirkins NFTs and their smart contracts       
to Hermès. As for Rothschild’s insistence that a disclaimer -- namely,      
“MetaBirkins are artworks by Mason Rothschild and are not affiliated        
with or endorsed or sponsored by Hermès,” Dkt. No. 176 at 1 -- would        

remedy any irreparable harm suffered by Hermès, this argument flies         
in the face of settled caselaw and the jury’s verdict. Indeed, the          
Supreme Court itself, in the recent Jack Daniel’s Products case, found      
such  a  disclaimer  insufficient  to  avoid  confusion.  Jack  Daniel’s    
Products, slip op. at 7. In this Circuit, “a defendant must justify         
the effectiveness of its proposed disclaimers at the remedy stage.”         
Hamilton Int’l Ltd. v. Vortic LLC, 

13 F.4th 264

, 274 n.4 (2d Cir.           
2021). Rothschild does not come close to meeting this burden. The           


    6 As the Court explained in its summary judgment order, see Dkt.       
140 at 5, a “smart contract” refers to a computer code that is also         
stored on the blockchain and that, among other things, determines the       
name  of  each  of  the  NFTs,  constrains  how  they  can  be  sold  or    
transferred, and controls which digital files are associated with each      
of the NFTs. Since the contract is distinct from the NFT with which         
it is associated, the contract and the NFT can therefore be owned by        
that was displayed on the www.metabirkins.com website, the very same        
disclaimer that failed to convince jurors that he was not-liable under      
the Lanham Act. Still, knowing this, Rothschild makes no effort --          
beyond stating, without evidence, that “[t]he use of a disclaimer  .        
. . would balance” the interests of Rothschild, Hermès, and the third       
parties -- to further defend this disclaimer. Def. Br. at 4.                
    Returning to the four eBay requirements, Hermès also satisfies         
the fourth and final requirement of that test, in that Hermès has           
shown that “the public interest would not be disserved by a permanent       
injunction.” eBay at 391. The public has an interest -- one that is         
embodied in the Lanham Act -- “in not being confused” about the origin      

of an artwork, as much as it does with respect to a consumer product.       
See N.Y.C. Triathlon, LLC v. v. NYC Triathlon Club, Inc., 

704 F. Supp. 2d 305

, 326–27 (S.D.N.Y. 2010). Although “[s]ecuring First Amendment        
rights” also serves a public interest, Rothschild, for the reasons          
already stated, cannot identify any First Amendment right that would        
be impaired by an injunction. New York Progress and Prot. PAC v. Walsh,     

733 F.3d 483, 488

 (2d Cir. 2013).                                           
    Having failed to prevail on any of eBay’s four factors, Rothschild     
opposes the plaintiffs’ request   for a permanent injunction on  one        
other ground: he argues that what he labels Hermès’ “bad faith” and         
“dishonest” conduct bars any injunctive relief on an “unclean hands”        
theory. This argument is entirely meritless. The party asserting a          

defense of “unclean hands” bears a heavy burden. “A court may deny          
party applying for such relief is guilty of conduct involving fraud,        
deceit,  unconscionability,  or  bad  faith  related  to  the  matter  at   
issue.” Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co.,      

2014 WL 3874193

,  at  *8  (S.D.N.Y.  Aug.  5,  2014).  Typically,  only   
behavior that is “truly unconscionable and brazen” justifies this per       
se  bar  on  injunctive  relief.  

Id.

  This  is  especially  true  in  this 
context. Because trademark law implicates the rights of the public qua      
consumers,  “courts  typically  only  bar  recovery”  under  this  theory   
“when a plaintiff’s conduct was egregious, or clear, unequivocal, and       
convincing.” Patsy’s Italian Rest., Inc. v. Banas, 

575 F. Supp. 2d 427, 461

 (E.D.N.Y. 2008).                                                   

    A  brief  look  at  some  of  the  cases  in  which  courts  denied    
injunctive relief on the basis of an “unclean hands” defense makes          
clear just how exacting this standard is. In Goldstein v. Delgratia         
Min. Co., 

176 F.R.D. 454, 458

 (S.D.N.Y. 1997), the plaintiff made           
multiple misrepresentations to the court about the nature of the action     
and the existence of other proceedings, and the defendants moved for        
an unclean hands defense that barred injunctive relief based on these       
misrepresentations. In another case, Estate of Lennon-by-Lennon v.          
Screen Creations, Ltd., 

939 F. Supp. 287, 293

 (S.D.N.Y. 1996), the          
defendant’s agent for purposes of negotiating the parties’ license          
was, in fact, secretly an agent for the plaintiff, and the plaintiff        
issued the license to another party. Again, the Court granted the           

defendant’s motion to bar enforcement of this license.                      
whatsoever  of  bad  faith  on  Hermès’  part,  let  alone  the  kind  of   
egregious conduct found in the   foregoing cases. Indeed, the Court         
finds Rothschild’s claims of   Hermès’ bad faith unsupported by any         
persuasive evidence. For the most part, Rothschild’s “evidence” of bad      
faith consists of minor misstatements by Hermès’ witnesses that were        
corrected soon after. Take, for instance, the testimony of Mr. Nicolas      
Martin,  Hermès’  global  general  counsel  and  Rule  30(b)(6)  witness,   
which Hermès claims was perjurious. On cross-examination during trial,      
Mr. Martin clarified his earlier testimony that Hermès had not had any      
contact with Rothschild after sending its cease-and-desist letter by        
saying “that he meant only that he personally had no direct contact         

with Mr. Rothschild.” Robinson Decl., Ex. B at 210:3-12. Rothschild         
offers  no  evidence  that   his  clarification  was,  as  he  says,        
“disingenuous,” and the Court has no reason to conclude that it was.        
Martin’s later testimony that, he was “only aware of one [trademark         
infringement case brought by Hermès] more than 20 years ago,” is also       
completely consistent with the fact that Hermès did, as a company,          
bring  a  trademark  infringement  claim  in  2011.  Mr.  Martin  made      
abundantly clear that he was drawing from his own knowledge in his          
testimony  and  was  not  making  a  global  statement  about  Hermès’      
litigation history. Moreover, Mr. Martin quickly rectified his error        
once it had been raised. Without multiplying examples, it suffices to       
state that after careful review, this Court concludes that Rothschild’s     
rather than concrete evidence.                                              
    Though Hermès has shown that a permanent injunction should issue       
as a general matter, the Court must still determine precisely what          
equitable relief is appropriate. It determines as follows:                  
    First, given the likelihood that the continued sale and marketing      
of the MetaBirkins NFTs will generate confusion as to source among the      
public, Rothschild and any “other persons who are in active concert         
or  participation  with  him,”  including  his  associates,  business       
partners, and others he has commissioned to market the MetaBirkins          
NFTs, are enjoined from using the Birkin marks or otherwise misleading      
the  public  about  the  source  of  the  MetaBirkins  NFTs,  as  further   

detailed in the an accompanying Permanent Injunction Order. See also        
Fed. R. of Civ. P. 65(d)(2) (“[A permanent injunction] order binds .        
. . the parties, [its] officers, agents, servants, employees, and           
attorneys; and other persons who are in active concert or participation     
[with them].”). The Court notes that neither this nor any other part        
of its Permanent Injunction Order applies to third parties that are         
not in “active concert or participation” with Mr. Rothschild.               
    Second, in light of the jury’s determination that Rothschild was       
liable for cyber-squatting, the Court orders Rothschild to transfer         
the  www.metabirkins.com  domain  name  and  related  materials  to  the    
plaintiffs. Here, the Court exercises its statutory powers to “order        
the forfeiture or cancellation of the domain name or the transfer of        

the domain name to the owner of the mark” where a defendant is found        
Court declines to also compel Rothschild to transfer social media           
accounts related to the sale and marketing of the MetaBirkins NFTs,         
it does enjoin him from using the infringing mark to facilitate the         
sale or marketing of the MetaBirkins NFTs on these and other platforms.     
See Order ¶ 2(d); Casestry, LLC v. Caseful, LLC, 

2020 WL 8673981

, at        
*1 (N.D.N.Y. July 7, 2020) (stating that the defendant, who was deemed      
liable for cyber-squatting, is permanently enjoined from using the          
infringing mark in “any social media reference”)                            
    Third, the Court declines to order that Rothschild transfer any        
MetaBirkins NFTs in his possession, including the smart contract, to        
Hermès (in order to be destroyed). It is true that, where there is a        

significant and ongoing risk of irreparable harm to the plaintiff,          
courts  have  sometimes  exercised  their  powers  to  “order  that  all    
[materials]  in  the  possession  of  the  defendant  [that]  bear[]  the   
registered mark” to be “delivered up and destroyed.” 

15 U.S.C. § 1118

.      
But,  here,  several  factors  make  this  remedy  both  unnecessary  and   
potentially unwise. To begin with, the Court has already enjoined the       
defendant and associated parties from further infringement, including       
the collection of any royalties from the NFTs that have already been        
purchased. See Audemars Piguet Holding S.A. v. Swiss Watch Intern.,         
Inc., 

46 F. Supp. 3d 255, 289

 (S.D.N.Y. 2014) (“Where the Court is          
entering  a  permanent  injunction  against  further  infringement,  the    
destruction  of  goods  may  not  be  necessary.”).  And,  because  the     

MetaBirkins NFTs are at least in some respects works of art, the Court,     
that  would  remedy  continued  consumer  confusion  while  avoiding  any   
potential constitutional problems. To be sure, Hermès has shown that        
Rothschild has continued to market, sell, and collect royalties from        
the MetaBirkins NFTs. But the fact that he has done so     before an        
injunction has been entered does not necessarily suggest, as Hermès         
thinks it does, that he would violate the terms of an injunction once       
it has been entered. If he did so,    Hermès would have recourse to         
remedies  at  law  and  equity,  including  asking  this  Court  to  hold   
Rothschild in civil or criminal contempt.                                   
    Fourth, the Court orders Rothschild to disgorge any profits he         
derived from the MetaBirkins NFTs since the beginning of trial to the       

present  day,  which  includes  royalties,  transfer  income,  or  other    
financial benefits that he received from resales of the NFTs. Of note,      
the jury already awarded Hermès $110,000 in net profits to be paid by       
Rothschild (plus $23,000 in statutory damages for cyber-squatting) in       
order  to  compensate  Hermès  for  Rothschild’s  unlawful  use  of  its    
trademarks through the first day before trial, January 30, 2023. So,        
here, the only issue left to resolve is whether Hermès is also entitled     
to net profits from the first day of trial -- January 31, 2023 -- to        
the present for Rothschild’s continued violations of its trademarks.        
    Disgorgement under the Lanham Act is a type of compensatory award,     
“measured  by  the  profits  [gained  by]  the  defendant  [through]  his   
infringement,  the  costs  of  the  action,  and  damages.”  Fleischmann    

Distilling  Corp.  v.  Maier  Brewing  Co.,  

386 U.S. 714, 720

  (1967);  
(S.D.N.Y. Oct. 24, 2022); George Basch Co. Inc. v. Blue Coral, Inc.,        

968 F.2d 1532, 1539

 (2d Cir. 1992). Bound only by the “principles of        
equity,” courts may, largely at their discretion, decide whether to         
grant net profits under the Lanham Act to a victorious plaintiff. See       
Romag Fasteners, Inc. v. Fossil, Inc., 

140 S. Ct. 1492, 1494-97

 (2020);     

15 U.S.C. § 1117

(a).                                                        
    This begs the question of what principles of equity should guide       
the Court’s determination. For one, though a plaintiff need not show        
that the defendant acted with “willful deception” in his infringement,      
whether he did so “is a highly important consideration in determining       
whether an award of profits is appropriate.” Romag, 

140 S. Ct. at 1497

.  And  here,  the  jury  verdict  is  unequivocal  that  Rothschild    
purposely intended to confuse the public into thinking there was an         
association between his project and Hermès, more specifically, that         
he  “intentionally  designed  [his  NFTs]  to  mislead  consumers”  about   
their source. Dkt. No. 170 at 15.                                           
    Rothschild’s only defense to this intent finding has already been      
rejected above. He argues that his continued use of Hermès’ trademarks      
after he displayed his disclaimer was not explicitly misleading and         
that, accordingly, he has thus not since the start of trial engaged         
in the sort of “willful deception” that would justify an award of           
disgorgement for the period here in issue. See Def. Br. at 15. But,         
to  reiterate,  the  jury  found  that  his  decision  to  use  Hermès’     

trademarks in the name and design of the MetaBirkins NFTs -- and not        
misleading,  and  rejected  his  disclaimer  defense.  Rothschild  thus     
cannot now argue that he intends to use these marks as part of a            
communicative message, rather than, as the jury found, to exploit the       
goodwill the public attaches to the Birkin marks.                           
    In addition, all of the other equitable principles deemed relevant     
by the Second Circuit -- including “the availability and adequacy of        
other  remedies”  and  “the  degree  of  certainty  that  the  defendant    
benefited from the unlawful conduct” -- cut in Hermès’s favor for           
injunctive  relief,  including  disgorgement.  To  this  end,  the  Court   
further orders that, no later than June 30, 2023, Rothschild shall          
specify  in  writing  any  royalties,  transfer  income,  or  financial     

benefits that he has earned from the MetaBirkins NFTs from January 31,      
2023 through June 30, 2023 and shall transfer those earnings to Hermès      
by no later than July 15, 2023.                                             
    Hermès’  remaining  requests  for  injunctive  relief  are  either     
uncontested by Rothschild or, in the Court’s view, uncontroversial.         
Thus, the Court orders Rothschild to communicate the details of the         
Court’s order for a permanent injunction to purchasers of the NFTs and      
others, as detailed in its accompanying Order for Permanent Injunction      
and to provide Hermès written confirmation of Rothschild’s compliance       
with the terms of the Court’s Order within thirty-one (31) days of its      
entry. It also orders both parties to preserve any documents that           
relate to this lawsuit, once again, in accordance with the Order for        

Permanent Injunction.                                                       
      Other Members of the Jury                                            

    Rothschild’s  final  motion  is  perhaps  his  most  frivolous.        
Rothschild requests leave to interview the jury’s foreperson, and “up       
to four other . . . jurors” because of “the substantial possibility         
that  the  jurors  considered  material,  prejudicial  and  erroneous       
information outside the record in reaching their verdict.” See Dkt.         
No. 170 at 1. These are serious accusations, but made without the           
slightest support.                                                          
    Earlier in this Opinion, the Court made clear that it finds the        
defendant’s  speculation  about  the  meaning  of  a  juror’s  post-trial   
statements totally unpersuasive. His other proffered suggestions are        
no better. For example, Rothschild asserts that the jury’s verdict was      
tainted by prejudicial information outside the record because one of        
the jurors exhibited knowledge of the copyright disputes over Andy          

Warhol’s  work  and  mentioned  the  Second  Circuit  case  of  Rogers  v.  
Grimaldi  in  her  post-trial  statements,  even  though  she  was  never   
instructed on the name of the Rogers case. It would require a truly         
breathtaking leap of logic to view this as proof that “the jury appears     
to  have  relied  upon  [information]  introduced  from  outside  the       
courtroom” or “independent, outside research.” Indeed, two alternate        
possibilities, at the very least, are equally plausible: one, this          
“out-of-court” information could not have impacted the verdict because      
the juror learned of it from research she conducted after the jury had      
completed its deliberations; or two, the juror knew of this information     
the verdict. Neither this juror in her post-verdict statements nor any      
other member of the jury ever intimated that any outside knowledge          
motivated their decisionmaking or, indeed, that they even possessed         
any extrinsic knowledge during their deliberations. The Court, in the       
absence of even a shred of concrete evidence, refuses to conclude that      
extraneous information poisoned the jury’s verdict.                         
    The absence of evidentiary support becomes even more clear when        
we compare this case to the few in which leave has been granted to          
investigate bias among the jury. Take, for instance, Remmer v. United       
States,  a  case  that  the  defendant  (incorrectly)  cites  for  the      
proposition that, “[o]nce a party has shown reasonable grounds to           

suspect that the jury might have been tainted by information outside        
the record, a Court must conduct an inquiry into the jury’s bias.” 

347 U.S. 227, 229-30

 (1954). There, the Supreme Court vacated the jury’s        
verdict and directed the lower court to investigate potential bias          
among the jury only after it discovered an unknown man had promised         
one of the jurors a substantial financial award if he found in favor        
of the petitioner. The difference in the quality of evidence that           
served as the basis of the moving party’s request in this case and in       
Remmer could not be more stark.                                             
    Post-verdict  jury  inquiries  are  far  from  harmless:  they  risk   
“subjecting juries to harassment, . . . burdening courts with meritless     
applications, . . . and creating uncertainty in jury verdicts.” United      

States v. Vitale, 

459 F.3d 190, 197

 (2d Cir. 2006). More fundamentally,     
the  specter  of  frequent  investigations  chills  the  honest  exchange  of 
views    during    jury    deliberations,    which    take    place    with    the 
understanding  that  the  content  of  the  deliberations  will  generally  not 
become  public  if  not  divulged  by  the  jurors  themselves.   Courts  have 
granted   leave   for   such   motions   only   in   the   most   extraordinary 
circumstances,   where   there   is   “clear,    strong,    substantial,    and 
incontrovertible  evidence  that  a  specific,  nonspeculative  impropriety 
has  occurred  which  could  have  prejudiced  the  trial.”  United  States  v. 
Stewart,  

433 F.3d 273, 302-03

  (2d  Cir.  2006).  Nothing  of  this  kind  is 
remotely  present  here. 
     In  conclusion,   the  Court  hereby  denies  both  of  the  defendant’s 
motions  in  their  entirety  and  enters  a  permanent  injunction  against 
the  defendant,  the  terms  of  which  are  detailed  in  an  order  accompanying 
this  Opinion. 
     SO  ORDERED.                                              
NewpYork,  NY                                     ad!  (kA 
 6/33,   2023                                  =e  LE,  U.S.D.J.