Digital Tokens and Trademarks

The Nike and “JRR Token” cases

by Cokato attorney Tom James

Minting and selling digital tokens can raise copyright issues, trademark issues, or both. I talked about copyright issues in a previous post. In this article, I outline the trademark aspects of digital tokens.

Image that was displayed on the website to which the domain name jrrtoken.com resolved, displayed in Tom James article solely for purposes of illustrating an article about digital tokens and trademarks

Blockchains and digital tokens

You can find a quick explanation of what blockchains and digital tokens (fungible and non-fungible) are in this article.

People use digital tokens for various reasons, including:

  • Cryptocurrency. Fungible tokens are used for this purpose.
  • Authentication. Some companies use NFTs as an authentication system for their customers, especially for high-end or luxury goods.
  • Advertising/Publicity. Companies sometimes distribute collectibles or other branded merchandise as a way of increasing brand awareness. NFTs offer one more way of doing that.
  • Revenue. Non-fungible tokens (NFTs) increasingly are sold at auctions. Sometimes a decent profit can be made this way.

Trademarks

A trademark is something that operates as an identifier of the source or origin of a product or service, distinguishing a particular product or service from those marketed by other people or companies.

Many kinds of things can serve as trademarks. Words, letters, symbols, logos, sounds, motions, colors, trade dress (product packaging or design), architecture, etc.  – and combinations of them – can potentially serve as trademarks, provided they operate as such.

Functional aspects of a product, packaging or other trade dress cannot be claimed as trademarks. This includes both utilitarian and aesthetic functionality. The presence of a drive-through window cannot be claimed as a fast food company’s trademark. Why not? Because it is not just ornamental; it serves a useful function. The orange flavor of a beverage or chewable tablet cannot be claimed as a trademark because it enhances the consumer’s enjoyment (or tolerance) of the product. That is to say, it serves an aesthetic function. You get the idea.

Trademark protection for digital tokens

Like an identifier of any other product or service, an identifier of the source or origin of an NFT or other digital token may be protected as a trademark, provided it operates as trademark, is distinctive, is nonfunctional, and is not likely to cause consumer confusion.

There are people and companies whose only business is dealing in digital products and services.  In addition, a growing number of owners of existing trademarks for non-digital products (such as shoes, books, clothing, and so on) are now marketing digital goods, as well.

For a list of major brands that have filed NFT trademark applications in the United States, check out this Trademark Tote Board.

Some examples of companies that have filed for trademark protection of identifiers of NFTs include Nike, Converse, Mattel, Lion’s Gate, Estee Lauder Cosmetics, Kiss Catalog Ltd. Famous personalities (or their representatives), such as Kobe Bryant and Jay-Z are also filing trademark applications. The New York Stock Exchange has filed an application to register “NYSE” as a trademark for a marketplace for the trading of NFTs.

The most common classes in which digital tokens and services related to them are registered are IC 9 (downloadable software and media); IC 35 (business services), IC 36 (financial, banking, and real estate services), and IC 42 (scientific and technical services). This is not an exhaustive list.

In the United States, a trademark arises by operation of law when a valid mark is used in commerce as a trademark. By “valid mark,” I mean a mark that meets the requirements for one in the United States. It must be distinctive, nonfunctional, not likely to cause confusion about the source or origin of a product or service, and it must be used in commerce as a source identifier.

The JRR Token

The recent WIPO decision in Tolkien Estate Ltd. V. Domain Investments/Matthew Jensen illustrates the interplay of digital tokens and trademark law.

In this case, a Florida resident marketed and offered for sale digital tokens corresponding to a digital currency. He registered “jrrtoken.com” as a domain name for the conduct of this business. J.R.R. Tolkien’s estate filed a UDRP claim challenging this registration. The estate owns the trademark in “J.R. R. Tolkien,” which is registered as a trademark in both the U.K. and the U.S. The website of this domain name resolved to a website at “thetokenofpower.com.” That website included images of wizards, including one which the panel found looked like Gandalf from The Hobbit, and the phrase, “The One Token That Rules Them All.”

The panel found that “jrrtoken,” although not identical, is confusingly similar to “J R R Tolkien,” noting that “[w]hen viewed quickly, the disputed domain name and the . . . trademark look similar.”

The panel concluded that the name was selected for the purpose of creating a false and misleading association with J. R. R. Tolkien and profiting from the author’s reputation and goodwill.

Using a trademark in parody is a protected fair use. The panel here, however, did not regard the use to be parody. It found nothing humorous or funny in the domain name. It was “just a domain name chosen due to its similarities with the Complainant’s trademarks to take commercial advantage of its evocation.” The website was “clearly a commercial venture, which is clever but not humorous.”

Finding that the registration was in bad faith, the panel ordered the domain name transferred to the Tolkien estate.

Nike v. StockX

This month, Nike, Inc. filed a complaint in federal court against StockX, LLC for trademark infringement, dilution and other causes of action allegedly arising out of StockX’s alleged unauthorized use of Nike trademarks to mint NFTs. StockX allegedly claims its NFTs represent physical  Nike products that it stores in its vault.

This case demonstrates the importance of the distinction between an NFT and the product it represents. The first sale doctrine normally protects a reseller from trademark infringement liability. For example, if you legally purchase a pair of Nike brand shoes, then you are entitled to resell them at a garage sale without incurring trademark infringement liability. If StockX legally purchased Nike products and is reselling them without altering the labels on them, then the first sale doctrine might shelter the company from trademark infringement liability. Tokens, however, are not shoes.

It is sometimes possible for two different companies to use the same (or substantially similar) marks to market different kinds of goods or services. For example, one company may use DELTA to market airline services; another may use it to market faucets; and still another may use it to market electronics. The same mark, however, generally cannot be used to market the same, similar or related goods or services.

What is a “related” product or service? Basically, it is a product or service that a consumer could reasonably expect a company to expand into selling. For example, a consumer could reasonably expect a company that currently only sells computers to expand into the market for printers and other computer peripherals as well. Even if a company is currently only selling computers, you should expect to be sued for trademark infringement if you use their trademark to sell peripherals.

Expect courts to be called upon to decide whether consumers could reasonably expect a company to expand into the NFT market. That might be easier for the court in the Nike case to determine, if Nike establishes that it made its intention to move into the NFT market publicly known. It might not be as easy for a court to decide this question in other cases. Expect to see a lot more companies announcing their entry, or intention to enter, into the digital token market.

Dilution

It should be noted that it is not always safe to use an existing company’s trademark even for completely different, unrelated goods. If the trademark is famous, then using it in a way that blurs its distinctiveness or tarnishes its reputation is also unlawful. This is known as “dilution.”

Licensing

If you have a great idea for an NFT using characters or other trademarks that someone else owns, consider obtaining a license to use the trademarks. True, you might have to share profits with the trademark owner, but that could be a small price to pay compared to how much you stand to lose if you are hauled into court for violating trademark rights.

Need help with a trademark registration?

Ready to register a trademark? Contact the Law Office of Tom James.

NFTs and Copyright

The rise in popularity of nonfungible tokens (NFTs) has generated considerable controversy and confusion about whether and how copyright law applies to them. In this article, Cokato, Minnesota attorney Thomas James discusses the interplay between NFTs and U.S. copyright law.

by Minnesota attorney Thomas James

The rise in popularity of nonfungible tokens (NFTs) has generated considerable controversy and confusion about whether and how copyright law applies to them. In this article, Cokato, Minnesota attorney Thomas James explains what they are and discusses the interplay between NFTs and U.S. copyright law.

Minnesota attorney Thomas James illustrates discussion of NFTs with a digitized copy of Van Gogh's "Starry Night"

Just for fun, call up an attorney and say, “Hey, I‘ve got a quick question for you. Can I make, sell and buy NFTs without getting into copyright trouble?” Depending on the attorney’s age, area of practice, and musical tastes, the answers you get may be anything from “What makes you think that selling shares of the Nichiyu Forklift Thailand company could raise copyright issues?” to “The answer, my friend, is blowing in the wind” – and many variants in between.

(More probably, someone other than the attorney would answer the phone and ask, “Would you like to set up an appointment?” That, however, would not help to make the point.)

Incidentally, don’t really make a telephone call like this “just for fun.” I was only joking I wouldn’t want you to incur unnecessary legal fees or be accused of making an unwanted or disturbing telephone call.

The point is that many members of the legal profession are scrambling just as much as everybody else is to understand NFTs and how copyright laws apply to them. The aim of this article is to reduce some of the confusion by shedding some light on what NFTs are and how copyright laws may apply to them.

What are NFTs?

NFT stands for “non-fungible token.”

Great. Now what the heck is that? Well, let’s break it down.

Fungible vs. Non-fungible

An item is said to be “fungible” if it is interchangeable with similar items. For example, if a retailer orders 100 pounds of red potatoes from a wholesaler, the contract is most likely one for the purchase of fungible goods. The retailer most likely has not specifically identified any particular potato that must be included in the batch, so long as they’re all of merchantable quality. By contrast, if an art collector enters into a contract to purchase an original painting by Peter Doig, it is almost certainly going to be a contract for a non-fungible product (the painting.) The buyer of a non-fungible item wants a specifically identified item.

Currency is a good illustration of the difference. When you cash a check at a bank, you don’t really care which particular bills and coins you are given in exchange for the check, so long as the amount you are given is equal to the amount specified on the check. The currency in this situation is fungible. By contrast, if you present a check for $4 million dollars to a rare coin vendor to purchase a 1913 Liberty V nickel, you would not consider it acceptable for the vendor to give you a standard-issue 2019 nickel in its place. The rare coin in this example is not fungible, i.e., it is non-fungible.

Tokens

A token is something that represents or stands for something else. New York City old-timers may recall subway tokens – small, coin-shaped objects representing the right of access to a subway train. Casino chips are tokens representing specified amounts of money.

A digital token is a programmable digital unit that is recorded on a digital ledger using blockchain technology. There are a lot of different kinds of digital tokens. They can represent physical goods or digital goods.

Bitcoins are examples of fungible digital tokens. Digital NFTs, on the other hand, most commonly represent art, a photograph, music, a video, a meme, or a digitized scan of some other kind. Cryptopunks, pixelated images of characters each one of which is unique and different from others, are some of the earliest NFTs, but many other examples abound.

Ethereum has developed standards for digital tokens. The ERC-721 standard governs digital NFTs. Under this standard, every NFT must have a tokenID. The tokenID is generated when the token is created. Every NFT also must have a contract address. This is a blockchain address that can be viewed using a blockchain scanner. The combination of tokenID and contract address is unique for each NFT.

Blockchains

Both fungible and nonfungible tokens are built and reside on blockchains. A blockchain is simply a database that stores information in digital format. Think of them as digital ledgers. They are called “block” chains because information is stored in groups (“blocks”). When a block reaches its storage capacity, it is closed and linked to the previously filled block. A new block will be formed for any new data that is added later. As this process repeats, a chain of records is created. Hence the “chain” in blockchain. Each block is time-stamped.

Blockchains are simply record-keeping mechanisms. They work well for many, but not all, kinds of digital files. They play a significant role in cryptocurrency systems, as they maintain a secure, decentralized record of transactions. They are not as efficient, however, for large digital files like artwork, videos, sound recordings, and so on. In these cases, a nonfungible token, not the actual file, can be made a part of the chain. This is why, in addition to a tokenID and contract address, an NFT will frequently contain the creator’s wallet address and a link to the work the token represents.

One of the most important things to remember about NFTs, for purposes of copyright law, is that although they might contain a creative work within them, more typically they link to a work in some way. They are pieces of code containing a link; they are not typically the works themselves.  

Transfers of NFTs vs. transfers of copyrights

NFTs representing artwork sometimes sell for millions of dollars. Perhaps this explains the popular misconception that the copyright in the work the NFT represents gets transferred along with the NFT. No, buying an NFT representing a work of art does not, by itself, give the buyer the rights of a copyright owner. You might think that you must be getting something more than a string of code when you buy an NFT, but no. In the United States anyway, an assignment of copyright must be express and made in a writing signed by the copyright owner (or the copyright owner’s authorized agent.)

Of course, if a written contract does expressly provide for the assignment of the copyright, then a transfer of a copyright may co-occur with the transfer of an NFT. In the absence of such a contractual provision, however, buying an NFT does not transfer the copyright in the artwork it represents. Instead, it operates in a way similar to the way buying a copy of a copyrighted book or a print of copyrighted artwork does.

The question whether the transfer of an NFT gives the transferee a copyright license is a little more complicated.

In the United States, an exclusive copyright license, like an outright transfer, must be in writing. A non-exclusive license, on the other hand, may be either express or implied. In addition, it is possible to code any type of agreement into a smart contract (an agreement that is written in code and stored on a blockchain.) If the existence of a valid copyright license can be proven, then the nature and extent of the NFT transferee’s rights may be governed by its terms.

A U.S. federal court had occasion to address the subject of implied copyright licenses in the case of Pelaez v. McGraw Hill, 399 F. Supp. 3d 120 (S.D.N.Y. 2019). There, the court ruled that the test for an implied license is whether the parties’ conduct, taken as a whole, demonstrates an intent to grant a license. The court pointed out that an implied license cannot be based on the unilateral expectations of one person. A party’s subjective belief that he or she has been granted a license is not enough. The totality of facts and circumstances must be such that a court could reasonably infer that both parties intended a license.

Copyright ownership arises at the time an original, creative, expressive work is fixed in a tangible medium. Registration is not required. Despite this feature of copyright law, some countries make registration of the copyright a prerequisite to enforcing it in court. The United States is such a country.

Some people believe that because blockchain operates as an unalterable record of ownership, it serves as a substitute for registration with the U.S. Copyright Office. This is not the case.

The U.S. Copyright Act requires the copyright in a domestic work to be registered with the Copyright Office before an infringement claim may be filed in court. 17 U.S.C. § 411. It does not make an exception for cases in which ownership is sought to be proven by a “poor man’s copyright” (i.e., submitting into evidence the postmark on an envelope in which you have mailed a copy of the work to yourself), much less for a digital NFT.

Of course, a registration certificate only creates a presumption of copyright ownership. The presumption is rebuttable. Could evidence such as the date on which an NFT representing the work was created and written into the blockchain be used to rebut that presumption? Possibly. Then again, how probative is that evidence? Anyone can make a false ownership claim and write it into the blockchain, just as anyone can mail an infringing copy of a work to themselves.

Unless Congress amends the Copyright Act to make blockchain a substitute for registration with the Copyright Office, it would be foolhardy to rely on blockchain as a registration alternative.

Infringement

Is minting an NFT associated with a copyrighted work, without permission, infringement? The answer to this question is not as simple as you might think.

The exclusive rights of a copyright owner include reproduction, distribution, public display, public performance, and the making of derivative works. An NFT containing only a tokenID, contract address and a link to a work is merely a string of code associated with a work; it is not the work itself. If an NFT only contains a link to the work, not the work itself, then it is difficult to see how minting an NFT would violate any of the exclusive rights of a copyright owner.

Of course, if the NFT itself contains copyright-protected elements of the work (and this would have to be something more than the title, artist name and a link), then it might be a reproduction or a derivative of the work. In this situation, creating an NFT without the copyright owner’s permission could constitute infringement, since the copyright owner has the exclusive right to make copies and derivatives of the work.

If the link points to a copy or derivative work that the link creator created in violation of the copyright owner’s exclusive rights to make copies and derivative works, then the link creator could incur two kinds of infringement liability. Even if minting an NFT does not itself infringe a copyright, including in it a link to an infringing copy of a copyright-protected work could result in contributory liability for infringement if that person knows or should know that it will facilitate or encourage unauthorized copying (or other unauthorized use) of a copyrighted work. And of course, there would be direct liability for making the copy or the derivative work without the copyright owner’s permission.

The first sale doctrine

Under U.S. copyright law, the purchaser of a lawfully acquired copy of a copyrighted work may resell that copy without first getting the copyright owner’s permission, unless a contract governing the acquisition of the copy provides otherwise. This is why purchasing a paperback copy of The Andromeda Strain on Amazon.com and later reselling it at a garage sale will not subject you to liability for infringing the copyright owner’s exclusive right to distribute copies of the work.

Does the first sale doctrine also apply to NFTs?

The first sale doctrine generally does not apply to resales of digital goods. This is because a sale of a digital file normally will require making a copy of the file. That would violate the copyright owner’s exclusive right to reproduce his or her work. See, e.g., Capitol Records LLC v. ReDigi Inc. (2d Cir. 2018) (refusing to apply the first sale doctrine to the resale of an MP3 file because the resale would require making an unauthorized reproduction of the original MP3 file).

NFTs, however, arguably are distinguishable from MP3 files. A purchaser of an NFT does not buy the digital file containing the copyright-protected work. An NFT buyer simply purchases a token. Reselling a token does not involve reproducing the work itself. cf. Disney Enterprises Inc. v. Redbox Automated Retail LLC (C.D. Cal. Feb. 20, 2018 (first sale doctrine inapplicable to digital download codes because they are options to create a physical copy, not actual sales of copies).

If the transferee of an NFT uses it to access the copyrighted work, and in the course of doing so, the work is reproduced or distributed, then it would seem that the transferee could, at that point, be liable for copyright infringement. There would also appear to be a potential risk of liability for contributory infringement on the part of the NFT seller, at least in some cases.

Of course, this should not be a problem if the copyright owner has authorized resales by NFT buyers.

Contact Minnesota attorney Thomas James

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