By Isaiah Poritz
Bored Ape Yacht Club nonfungible token creator Yuga Labs Inc.’s trademark infringement lawsuit against two artists who allegedly sold unauthorized copycat NFTs depicting digital images of apes, survived a motion to dismiss and allegations it was brought to suppress the artists’ speech.
US District Judge John F. Walter denied Ryder Ripps and Jeremy Cahen’s motion to dismiss the suit on Dec. 16, ruling that a trademark-free speech balancing framework known as the Rogers test doesn’t apply to the allegedly copied NFTs.
Walter also denied Ripps and Cahen’s Anti-Strategic Lawsuit Against Public Participation motion, which argued the lawsuit was attempting to suppress protected speech and criticism of racist dog whistles allegedly embedded in the Bored Ape NFTs.
The Bored Ape NFT collection, released in 2021, depicts cartoon profile pictures of apes and achieved enormous popularity after being endorsed by celebrities like Justin Bieber and Paris Hilton. The NFTs have generated in more than $2 billion in total sales.
Yuga Labs brought the lawsuit in the US District Court for the Central District of California in June, alleging that Ripps scammed consumers into purchasing fake Bored Ape NFTs using Yuga Labs’ registered trademarks. Ripps, a visual artist and designer, said that his NFTs, called “RR/BAYC,” critiques neo-Nazi and alt-right imagery found in the real Bored Ape collection.
Louis Tompros of Wilmer Cutler Pickering Hale & Dorr LLP, who represents Ripps and Cahen, said the artists will continue fighting the suit as it proceeds to discovery and trial.
“This was protected First Amendment expression and artistic criticism that Ryder was engaged in, and we look forward to proving that,” Tompros told Bloomberg Law.
Ripps sought dismissal based on the Rogers test, a legal doctrine that allows the unauthorized use of a trademark as long as it is artistically relevant and doesn’t explicitly mislead consumers.
But the judge was unconvinced, finding that the RR/BAYC NFTs “do not express an idea or point of view,” but instead points to the same images associated with the original Bored Ape collection. That means the Rogers test shouldn’t apply, Walter said.
Even if the court did apply the test, Walter found, Ripps’ use of the Bored Ape trademarks, including its skull logo, wasn’t artistically relevant. “Although there is a low bar for artistic relevance, as Plaintiff points out, it is not infinitely low,” the judge wrote.
The RR/BAYC NFTs are also explicitly misleading because they use the same trademarks in the same NFT marketplaces, Walter noted.
In a pending case involving Jack Daniel’s and dog toys, the US Supreme Court will consider whether the Rogers test should apply to ordinary consumer products.
Ripps’ anti-SLAPP motion failed because Yuga Labs’ lawsuit was based on the commercial use of a trademark, not on Ripps’ criticism of the Bored Ape NFTs, Walter said.
A Yuga Labs spokesperson said in a statement to Bloomberg Law that the ruling rightly moves the case forward. Ripps and Cahan “intentionally misled consumers and made millions by using Yuga’s intellectual property to market and sell copycat NFTs. We will continue to prove these facts as the case progresses,” the spokesperson said.
Fenwick & West LLP represents Yuga Labs.
The case is Yuga Labs Inc. v. Ripps, C.D. Cal., No. 2:22-cv-04355, motion to dismiss denied 12/16/22.
To contact the reporter on this story: Isaiah Poritz in Washington at iporitz@bloombergindustry.com
To contact the editors responsible for this story: Adam M. Taylor at ataylor@bloombergindustry.com; Jay-Anne B. Casuga at jcasuga@bloomberglaw.com
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