Non-fungible tokens Patent Trademark Office Comments NFTs

On November 23, 2022, the US Patent and Trademark Office and the US Copyright Office announced that they are seeking public input on intellectual property (IP) considerations related to non-fungible tokens (NFTs). The agencies will hold three public roundtables aimed at patents, trademarks and copyrights respectively, planned as follows:

• 10 January 2023 – Patents and NFTs

• 12 January 2023 – Trademarks and NFTs

• 18 January 2023 – Copyright and NFTs.

The roundtables will be live streamed and the agencies will post instructions for registering to watch them live. Requests to participate as a panelist in any of the round tables must be received by 21 December 2022 to be considered.

The agencies also issued a request for comments, asking for answers to 13 questions of particular interest:

1. Describe current and potential future uses of NFTs in your field or industry.

2. Describe any IP-related challenges or opportunities related to NFTs or NFT markets.

3. Describe how NFT markets affect the production of materials subject to IP protection.

4. Describe whether, how and to what extent NFTs are used by or may be used by IP rights holders to

   1. Document the authenticity of an asset

   2. Document the seller’s ownership of or authority to sell an asset

   3. Document the seller’s authority to transfer any relevant or necessary IP rights relating to an asset

   4. Document any restrictions related to IP rights around the sale, or buyer’s use, of an asset.

5. Describe whether, how and to what extent NFTs present challenges for IP rights holders, or those selling assets using NFTs, with respect to the activities described in question 4.

6. Describe whether, how and to what extent NFTs are used by, can be used by or present challenges or opportunities for rights holders

   1. Get their IP rights

   2. Transfer or license their IP rights

   3. Exercise overall control and management of their IP rights

   4. Enforce their IP rights.

7. Describe how and to what extent copyrights, trademarks and patents are relied upon, or expected to be relied upon, in your field or industry to

   1. Protect assets linked to NFTs

   2. Combat infringement related to NFT-related assets offered by third parties

   3. Ensure the availability of appropriate reuse of NFT-related assets.

8. Are current IP laws adequate to address the protection and enforcement of IP in the context of NFTs? If not, explain why and describe any legislation you believe should be considered to address these issues.

9. Describe any IP-related impacts those in your field or industry have experienced in connection with the actual or intended use of NFTs. Describe any legal disputes that have arisen in the following contexts, and the outcome of such disputes, including references to relevant legal proceedings:

   1. The relationship between the transfer of an NFT and the ownership of IP rights in the associated asset

   2. Licensing of IP rights in the asset linked to an NFT

   3. Infringement claims when either (i) an NFT is linked to an asset in which another party has IP rights, or (ii) IP rights in the asset linked to an NFT are owned by the NFT creator

   4. The type and/or extent of IP protection granted to the NFT creator

   5. The application of one or more of the exclusive rights under 17 USC §106 to transactions involving NFTs.

10. Describe any instances you have observed where a party has sent or received

    1. A notice of alleged copyright infringement, counter-notice, or material misrepresentation, pursuant to 17 USC § 512, in connection with an NFT

    2. Other IP-related legal claims seeking the removal or restoration of NFT-related material.

    3. For each such case, describe the nature and outcome of that claim or process, including whether the material was ultimately removed and, if so, whether the material subsequently reappeared. If a violation or 17 USC § 512(f) action was filed, provide citations to the court docket and any relevant judicial decisions.

11. Describe the extent to which adjustments are being made to IP portfolio planning and management in light of the rise of NFTs.

12. Describe any experiences with seeking IP protection for, or use of, assets related to NFTs in foreign jurisdictions.

13. Identify any additional IP issues related to NFTs that you believe the offices should consider in conducting this study.

For more information about the roundtables and the request for comments and how to submit comments, see Federal Register notice. Comments must be received by 9 January 2023 to ensure processing.