Navigation
Search
Change language and content customisation
Find an advisor
Get in touch
Find an office
Search for:
Jump straight to:
Please enter a search term
We can use your selection to show you more of the content that you’re interested in.
Sign-up to follow topics, sectors, people and also have the option to receive a weekly update of lastest news across your areas of interest.
Got an account already?
Search for:
Please enter a search term
Out-Law News | 16 Nov 2022 | 11:38 am | 2 min. read
An Italian court ruling in favour of the football club Juventus highlights the importance of conducting thorough due diligence before seeking to sell non-fungible tokens (NFTs) containing images of others’ brands, expert have said.
Dr. Nils Rauer and Tom Nener of Pinsent Masons were commenting after the Rome Court of First Instance granted Juventus a preliminary injunction banning a technology company called Blockeras from minting, advertising and selling NFTs that bear its trade marks. The judgment was handed down in July but has only recently been reported.
NFTs are digital tokens that can be bought and sold using cryptocurrency and represent certificates of ownership for virtual or physical assets. Unlike cryptocurrencies, which are also underpinned by blockchain technology, NFTs are digital ‘uniques’, which cannot be exchanged like coins.
According to a report on the Rome ruling by the IPKat, Blockeras created and marketed NFTs and other digital content that featured images containing Juventus’ trade marks, as well as an image of former player Christian Vieri wearing a Juventus strip. Blockeras had Vieri’s permission to use his image, but it had not obtained Juventus’ authorisation, the IPKat said.
The Rome court considered Juventus’ claims of trade mark infringement by Blockeras and granted the club a preliminary injunction. It rejected Blockeras’ claim that Juventus’ trade mark rights were confined to a different class of goods than the digital goods it made and sold.
Rauer said: “The rights in an NFT itself and the underlying intellectual property rights linked to the digital content the NFT refers to are distinguishable from one another. Many people have the false impression that buying a NFT means that the creator of the NFT automatically is the rightful owner of the IP right vested in the NFT. That is wrong. Businesses that decide to start minting NFTs on a blockchain need to engage in adequate clearing of rights first. At the moment, there are lots of examples of NFTs being minted without the full legal picture having been established first.”
“The Italian case of Juventus is a good example. The IT company that engaged in the minting of NFTs got the licence to the personal rights of the player but they did not get the rights Juventus owns to the shirt the player was wearing in the photo used,” he said.
“Serious due diligence covering all relevant aspects of law, notably in respect to IP rights and personal rights, should be undertaken before digital assets like NFTs are created. Such due diligence must pay tribute to the fact that, notably when trade marks come into play, we are in the phase of dynamic evolution not only in respect to modern technologies, but also in respect to legal and regulatory framework,” he said.
In the UK, for example, a parliamentary committee is in the process of exploring the operation, risk and benefits of NFTs and the wider blockchain. One of the questions the Digital, Culture, Media and Sport Committee is considering in its inquiry, given NFT regulation in the UK is largely non-existent, is whether more regulation is needed.
Nener said there remains significant ambiguity over whether the description of the goods and services for which trade marks have been registered will cover NFTs – even for trade marks registered for goods and/or services that already have the digital angle to them.
He said a process to update the list brand owners can choose from when picking goods and services to obtain trade mark protection for is underway, along with updates to registration guidelines.
Nener said: “Brand owners are advised to revisit their trade mark portfolio and, in particular, those registrations that allow for the use of the trade mark in the digital sphere. It is highly likely that there is at least some ambiguity over whether or not NFTs are in scope of existing rights.”
Contact an adviser
Dr. Nils Rauer, MJI
Rechtsanwalt, Partner
Tom Nener
Partner
Out-Law Analysis
17 Dec 2021
Out-Law News
17 Jun 2022
Sign-up to receive the latest news, insight and analysis direct to your e-mail inbox
Out-Law News
A legal expert has welcomed the decision of the Court of Justice of the European Union (CJEU) to limit the scope of EU data collection rules designed to fight terrorism and serious crime.
Out-Law Analysis
New regulations issued this week give courts in England and Wales new powers to permit individuals overseas to watch transmissions of ‘hybrid’ court hearings combining both in-person and remote participants.
Out-Law News
The UK government should undertake a net zero tax review to establish how the tax system can best support the transition to net zero, the Climate Change Committee (CCC) has recommended in a report to parliament.
Out-Law Analysis
Pensions disputes: managing member expectations paramount
Out-Law Analysis
UK subsidy control post-Brexit: access to effective judicial remedies
Out-Law News
'Steps of court' settlement was not negligent, court rules
Out-Law News
'Vast majority' of companies not seeking to avoid tax
Out-Law News
'World first' industrial decarbonisation strategy developed in the UK
Out-Law Analysis
3D printing: UK product safety issues
Out-Law News
5G potential for business highlighted in UK funding programme
Out-Law Analysis
A global view of the law applicable to an arbitration agreement
2022 Copyright Pinsent Masons LLP
We use cookies that are essential for our site to work. To improve our website, we would like to use additional cookies to help us understand how visitors use the site, measure traffic to our site from social media platforms and to personalise your experience. Some of the cookies that we use are provided by third parties. Please visit our Cookie Policy for more information. To accept all cookies click 'Accept all'. To reject all optional cookies or choose which optional cookies to allow, click ‘Cookie settings’. This tool uses a cookie to remember your choices.
See our Cookie Policy for more information
