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We outline what you need to know to ensure your brand and products stay safe in virtual spaces

Non-fungible tokens (NFTs) are one of the hottest intellectual property (IP) topics currently. NFTs can be used simply for marketing purposes or as a new form of asset to attract investment or as part of the transfer of products and services into the metaverse.

This new asset class has exploded across all sectors and raises some interesting challenges from an IP perspective. While NFTs have demonstrated themselves to be a powerful tool in the new digital era, they remain poorly understood.

In our series of blog posts on NFTs, we explore intellectual property considerations, misconceptions and issues that we are seeing arising in the NFT space.

Damages of at least US$1.6 million awarded by the US District Court in the ‘Bored Ape Yacht Club’ litigation

In May 2023 we reported on the IP infringement decision of the Californian District Court, in relation to the dispute between the creators of the Bored Ape Yacht Club (BAYC) non-fungible token (NFT) collection, Yuga Labs, and the ‘artists’ Ryder Ripps and Jeremy Cahen.

US court refuses copyright registration for AI-generated art

Dr Thaler’s latest attempt to obtain IP protection for “creations” of his AI system has failed, with a US Court rejecting copyright protection for an AI-generated artwork.

Talking Shop: A consumer sector podcast series: Episode 5 – Why NFTs; why now?

Josh Todd, Giulia Maienza and George McCubbin join Aoife Xuereb to discuss the NFT (Non-Fungible Token) marketplace in the consumer sector – from fine wine and fashion to enhancing the customer experience.

Remedies for IP infringement by NFTs – the MetaBirkins case continues

The US District Judge has now handed down its opinion and order (23 June 2023) on a number of post-trial motions sought by the parties in the “MetaBirkin” case and these provide some interesting insights into how courts may approach the question of remedies in non-fungible tokens (NFT) related cases.

The IP in NFTs – what you need to know

Non-fungible tokens (NFTs) are one of the hottest intellectual property (IP) topics currently. NFTs can be used simply for marketing purposes or as a new form of asset to attract investment or as part of the transfer of products and services into the metaverse.

The IP in NFTs – Strategies for protecting your brands and products in the metaverse

The creation (“minting”) and sale and use of NFTs raises many IP issues which we have discussed in our previous posts in our IP in NFTs series. However, brand owners and product manufacturers must also be vigilant in monitoring the virtual marketplaces to ensure that third parties are not creating NFTs that infringe their own IP rights.

Landmark trade mark/NFT decision in favour of IP owners – Hermès bags a win in the MetaBirkin case

Hermès has succeeded in its case of trade mark infringement against non-fungible token (NFT) artist Mason Rothschild. This was the first US trial considering the enforceability of intellectual property rights against the creator of NFTs.

The IP in NFTs – What is being purchased?

As we reported in our first blog post in this series, non-fungible tokens (NFTs) are a new asset class that is being adopted eagerly across all sectors, raising some interesting challenges from an IP perspective.

The IP in NFTs – Law Commission (E&W) proposes that digital assets are treated as new form of personal property

How should digital assets be treated in terms of property? This is what the Law Commission of England and Wales has been considering in its consultation paper paper on the recognition and protection of digital assets which is open for responses until 4 November 2022.

Trade mark protection in virtual worlds/the metaverse – IP offices respond with new classes for registration of virtual goods/NFTs as trade marks and the EUIPO deals with “metaverse” marks

The new version of the Nice Classification, the 12th edition, came into force on 1 January 2023, carries new categories for registration of trade marks in relation to NFTs and is used being by several national trade mark offices including the EUIPO and IP Australia.

The IP in NFTs – IP issues when minting NFTS – IP ownership and infringement in the metaverse

Creating an NFT can give rise to other IP issues, aside from questions of transfer of rights. In particular there is the issue of who in fact has the right to create and release NFTs and whether the NFT infringes third party rights.

NFT infringes trade mark rights – Italian Court grants preliminary injunction in Juventus case

The IP Division of the Court of Rome has issued a preliminary injunction to prohibit the minting and marketing of Non-Fungible-Tokens (“NFT”) that, unauthorised, reproduced well-known trade marks owned by the Juventus football club.

Bored Ape Yacht Club unregistered trade marks effective against copycat NFTs in Californian summary judgment

In a significant decision for NFT content owners worldwide, the producers of the Bored Aped Yacht Club NFT collection, Yuga, have successfully used unregistered trade mark rights and claims of false designation of origin under the US Lanham Act.

Key contacts

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George McCubbin

Senior Associate (Australia), London

George McCubbin
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Giulia Maienza

Senior Associate (Italy), London

Giulia Maienza
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Rachel Montagnon

Professional Support Consultant, London

Rachel Montagnon
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Andrew Moir

Partner, Intellectual Property and Global Head of Cyber & Data Security, London

Andrew Moir
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Pietro Pouché

Partner, Milan

Pietro Pouché

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Emerging Technologies Tech Regulation George McCubbin Giulia Maienza Rachel Montagnon Andrew Moir Pietro Pouché