Italian courts with Juventus in trademark battle over NFTs

An Italian court has awarded Juventus FC a victory in the latest round of a legal battle over non-fungible tokens (“NFTs”). In an order this summer that was recently made final in lieu of an appeal, it stayed The Rome Court of First Instance granted the Turin-based soccer club’s bid for a preliminary injunction, preventing Binance host Blockeras srl from offering NFTs that make use of the Italian club’s trademarks, including Juventus and the “Juve” wordmarks. as well as the design of the two-star-bearing black and white jersey. The court’s ruling follows Juventus filing a lawsuit against Blockeras earlier this year, accusing the fantasy football gaming platform of infringing its trademarks using NFTs linked to trading cards featuring former Juventus player Christian “Bobo” Vieri.

In what is being characterized as “the first known judgment by a European court to hold that NFTs that reproduce a third party’s trademarks without authorization” constitute trademark infringement and warrant an injunction, the Rome court held that by minting and selling 68 NFT- card (from which it generated nearly $36,000), Blockeras ran afoul of Juventus’ trademark rights. (While Blockeras made an agreement with Vieri to use his image for the cards, it did not obtain authorization from Juventus to use the marks.)

Some notable takeaways

Determining that Blockera’s use of the Juventus marks is likely to cause consumers to be confused as to the nature/source of the NFTs and thus, following Juventus, the Rome court provided a number of notable takeaways for players in the NFT space . – clarify the extent to which NFT-specific registrations are necessary and the distinction between NFTs and the assets linked to them.

Primarily, the court rejected Blockeras’ argument in opposition, arguing that an injunction should not be granted because, among other things, Juventus does not have registrations for the trademarks in question for use on “downloadable virtual goods.” Unconvinced, the court held that the Juventus trademarks are well known given that the club is the “most successful Italian football team”, and as a result there is no need to consider whether the marks are registered for use on “digital objects” or, more specifically, on ” digital objects certified by NFT.”

Even if there was a problem, Juventus maintains registrations for its marks in Class 9 for use in connection with “digital downloadable publications”, which would be sufficient, according to the court. At the same time, the court also stated that Juventus “proved that they have become active in … online games that are based on blockchain technologies and on the use of cryptocurrencies and/or NFTs through agreements with [global fantasy football game platform] Hurt.” (And beyond that, the court noted that the evidence on file shows the existence of “widespread commodity trading activities [by Juventus] in various sectors (clothing, accessories, games) carried out online … with the use of the relevant brands, and the company’s presence on the main social networks,” which also shows that it uses its brands in the digital world.)

The court’s decision here is in line with “the current mainstream approach that registration in Class 9 would [only] be required for non-famous trademarks to obtain protection against infringing NFTs, according to Trevisan & Cuonzo attorney Lorenzo Battarino. (It also echoes our earlier arguments that despite a flood of companies rushing to file applications for registration of their marks in the typical metaverse classes, big brands probably don’t need trademark registrations for goods/services they readily trade in the “real world.”)

Another critical takeaway comes from the court distinguishing between NFTs – or digital tokens registered on the blockchain – and the digital images typically associated with NFTs. This can be seen in the language of the injunction, which prohibits Blockeras from, among other things, engaging in further “production, marketing, promotion and offering for sale” of the NFTs, as well as “the digital content associated therewith.” The scope of the injunction appears to suggest that the NFTs themselves “have legal autonomy compared to the images or [other] data associated with them, says Battarino.

Some wider context: Other issues have devoted a good deal of attention to the potential token vs. token-bound-content dichotomy, with MetaBirkins creator Mason Rothschild, for example, arguing in response to the trademark complaint against him by Hermès that the NFTs themselves are merely a way to “authenticate” – and are thus separate from – his artwork. StockX has similarly emphasized the difference between NFTs and any assets linked to them in the lawsuit against it by Nike. Meanwhile, Hermès has argued that the complaint is “about the NFTs, not necessarily the images associated with them.”

Reflecting on the court’s decision, which Blockeras did not appeal (it had already stopped marketing the NFTs), Battarino claims that it “still leaves open some questions about how such innovative orders can be effectively enforced by owners of IP rights ( e.g., of the role of platforms hosting the infringing NFTs and related content, enforcement on the secondary market, assessment of damages, etc.), although he states that there is “no doubt” that related litigation will arise and courts will inevitably be called upon to resolve such outstanding issues.

The case is Juventus FC v. Blockeras srl., No. 32072/2022.