Juventus Football Club sued the specialized division of the Court of Rome Manufactured Non-Fungible Tokens (NFTs) commitment to “trading cardsTotally collectible Digitalthus with pictures of a famous soccer player, reproduced in a match with the team uniform, where the registered trademarks of the appellant were clearly visible, and were also variously used in the sales advertisements on the electronic platform chosen for the release of themselves.
Court, with aPrecautionary (undisputed) order dated July 20, 2022approved the applicant’s requests, and ordered an injunction — accompanied by a penalty for each day of delay or violation — of “further production, marketing, promotion and offering for sale, directly and/or indirectly, in any way and form, NFTs (Non-Fungible Tokens) the digital contents referred to in the Narrative, as well as any other NFTs (non-fungible tokens), digital content or products in general bearing the image referred to in the Narration, even if modified, and/or the brands of Juventus referred to in the Narration, As well as the use of said trademarks in any form and manner.”
The decision is a candidate to be a reference point at the global level at a time when strong attention is being paid, by all operators in the sector, to the legal aspects of this (relatively) new digital tool, which still does not find the right place and a clear legal definition. In fact, we would argue with those who define NFTs as “un digital assets not interchangeable, Like a photo, song, or videowhose ownership is authenticated and stored in a database called a blockchain and which can be collected, sold and traded on various platforms across the Internet” (Mark Cuban, definition of “NFT”, at www.britannica.com), to the more real (and rightly so, in This author’s opinion), considers them to be “unique digital certificates, recorded in the blockchain, used as a means of recording ownership of an object, such as a digital artwork or a collector’s item” (Draft EUIPO Guidelines 2023 edition, available at https://euipo.europa.eu/ohimportal/ nl/draft-guidelines-2023).
The decision, as we have said, precisely because of its subject matter is an absolute novelty, not only for being, as far as we know, the first at the European level to have an injunction from the creation of NFTs – so far known there are just two similar decisions, made recently in Turkey and Singapore, in While the most famous judicial proceedings pending in the United States have not yet reached a conclusion – but also for some of the considerations contained therein, and of course for more information consider submitting it.
The first reason for interest relates to the registration of Juventus trademarks. On the one hand, in fact, the Court attaches decisive importance to the fact that i brand names It is known, among other things, in relation to “the most famous Italian football team and with the biggest fans in Italy and abroad”, which confirms that it is not necessary to consider whether Juventus also registered its hallmarks in relation to “digital items” ” or (more specifically) “NFT-certified digital objects”.
On the other hand, while he obviously does not consider the circumstance decisive (in light of the foregoing considerations), he believes that a Class 9 trademark registration for products “also relating to downloadable electronic publications” is sufficient to include the particular digital contents in question. It represents, moreover, a tacit endorsement of this interpretation that has now already been adopted by the main national and international offices, including the EUIPO, whose class 9 is the class for the registration of trademarks used to distinguish certain types of “digital goods”. .
On the other hand, the decision is undoubtedly interesting because it showed how “the circumstance that [il calciatore] has already played for Juventus and that the latter has given permission to use his image by creating cards that reproduce the player in different jerseys of the teams he has played for, and therefore does not exclude the need to request permission to use the recording. The trademarks related to the teams whose shirts and names are reproduced, as they are commodities intended for commercial sale, through which the fame of the different teams in which the player has played also contributes to giving value to the digital image to be purchased.
With this consideration, the court reiterates, first of all, that provisionart. 97 of the Copyright Actin respect of the permitted uses of the person’s image right, also does not extend to the use of any trademarks represented in the same image.
However, the same consideration also introduces perhaps the most important concept of the entire decision, which underscores the fact that the creation of NFTs — which are “assets intended for commercial sale,” as the court put it — requires specific permission on the part of the trademark owner, which thus constitutes an infringement. in itself and distinct from the infringement, however verified, which consists of the use of the trademark in digital images associated with the NFT.
Thus, one preference is confirmed Legal definition of NFT taking into account the division Testimonial / content. But above all, it explains the rationale for the same precautionary injunction, which not by chance makes NFTs and corresponding digital contents fully distinct, requires the injunction to “produce, market, promote and offer for sale, directly and/or indirectly, in any manner and form.” Specifically, on the one hand “from an NFT (non-fungible token)” and on the other hand, “the digital contents indicated in the narrative,” as well as always, on the other hand, “from any other NFT (non-fungible token)” and, on the other hand, any “digital content or other product in general that bears the image referred to in the narrative, or even modified, and/or the Juventus trademarks referred to in the narrative, as well as the use of said trademarks in any shape or form.”
This is important because relevant results in practice can emerge from this kind of consideration, which largely constitutes the main topics of discussion in US cases (now well known, even if not yet determined) involving Maison Hermes v. Artist Mason Rothschild And the Nike vs used stock market.
In the latter case, in particular, the digital content/NFT dichotomy cannot be ignored, and the judge will have to decide whether creating an NFT can have intrinsic value such as overcoming, from a counterfeiting perspective, the fact that it in principle constitutes a digital certificate.” only” to the ownership of the asset to which it is attached; The good which, in theory, can also be legitimate in itself.
Returning to the present case, finally, it is certainly noteworthy that the Rome court also ordered “the defendant company to withdraw from the market and to remove from every website and/or from every page of the website directly and/or indirectly controlled by the same thing that displays these Products for sale and/or advertising, NFTs (Non-Fungible Tokens) and associated digital contents or products in general subject to inhibitions.”
For the company producing the accused NFTs, a problem could arise in the execution of such an order, in connection with the withdrawal from the market, above all if one considers that at the time of the action in question (according to what was announced by the defendant) almost all the NFTs were sold and therefore attached Pocket wallet From external buyers, by default not available to the same company that produced them.
This could certainly pose a real problem, in light of the very (technical) nature of the blockchain, but in relation to it it must be noted that the court clearly took into account this scenario, given that it had given importance, in rejecting the exception with which the defendant asserted not The existence of a cover in reimbursement, specifically to “the current possibility of reselling cards already purchased by users on the secondary market”.
Standard requirements:
Article 97 / Law