Trademark injunctions in the NFT landscape | Insight

Best practices for trademark enforcement in the NFT landscape continue to evolve.

A court in Italy granted an injunction in favor of the Italian football team Juventus based on the unauthorized use of its well-known trademarks in the digital NFT landscape. The Italian court heard a case where a blockchain platform, Blockeras, minted and commercialized trading cards in the form of NFTs on its “Coin of Champions” NFT collection and “COC” token ecosystem. As explained in Blockeras’ “Coin of Champions white paper”, such trading cards in the form of digital content will be produced for all athletes participating in professional competitions, whether for sports teams or in individual sports events.

One of the digital trading cards portrayed Italian footballer Christian Vieri wearing the Juventus jersey and other clearly identifiable team effects. Despite Blockeras being authorized by Vieri to use his image, Juventus claimed that Blockeras did not obtain permission from the football team to depict its well-known “JUVENTUS” team name wordmarks and figure mark consisting of the black and white team jersey/uniform in any way .

Injunctions and virtual worlds

The court concluded that such use of Blockeras was unauthorized and infringed Juventus’ trademark rights. In sum, the court ordered Blockeras to remove such content from the digital landscape and make it unavailable to the public.

The question is whether the order will be successful and effective in the long term. The court order is likely to be difficult to implement due to NFTs. These digital assets are backed with blockchain technology and this means that the data introduced in the blockchain ledger cannot be adjusted or deleted. As a consequence, the possibility of completely extinguishing “Coin of Champions” collectible football card NFTs – or other blockchain-based assets – is a problem.

measurements

The successful implementation of trademark injunctions in the NFT space remains a mystery to be solved in various jurisdictions. For now, trademark owners must consider the following basic best practices:

• The football team Juventus brought action in Italy, where the “JUVENTUS” brand is undeniably famous. Trademark owners should definitely seek the best forum for any enforcement.
• If a mark is not as well-known as the “JUVENTUS” mark is, seeking trademark registrations in relation to goods and services specifically bought and sold in the digital landscape will help enforce it in the event of unauthorized use in virtual worlds. Trademark owners should consider which countries are the most favorable places to take action.
• Consider a trademark monitoring service that will help you assess legal considerations beforehand, as well as how, where and when a mark is being infringed. Despite the immutable nature of NFTs, once potential unauthorized use is identified, it may be practical to cooperate with the various NFT marketplaces and report such infringing activity with the goal of removing the infringing material from the provider’s website.
• In parallel with the above, seek knowledgeable legal advice to establish a potential legal strategy in the event that the violation continues to occur.

Current trends and takeaways

The NFT sports landscape continues to evolve, and prevention of infringement of any trademark, as well as other intellectual property rights, must always be carefully considered. Recently, on November 27, 2022, in conjunction with Ethernal Labe, the famous Argentine soccer player Leo Messi launched his “Time Machine” NFT collection and accompanying digital experience. Unlike the Juventus case, this depicts how the goodwill and fame of a sports figure and/or team can be leveraged in the metaverse landscape directly.

The successful enforcement parameters for consent orders in the NFT metaverse ecosystem will continue to evolve with technology.

For more information and additional IP guidance in the metaverse, contact the authors.