(by the lawyer Danilo MartucciTonucci & Partners, intellectual property)
With an unprecedented law for the entire European territory, the Court of Rome has recognized the well-known trademark protection of Juventus: a decision that demonstrates the legal autonomy of the national football associations but still leaves many questions open.
Juventus FC has recently initiated a precautionary proceeding before the Court of Rome to obtain an injunction against an Italian company that operates fantasy football based on digital player cards, NFT (Non-Fungible Token), hosted on the world’s largest platform. Binance cryptocurrency exchange.
Specifically, the NFT reproduced an image of Bobo Vieri, the famous ex-footballer who played for the club, wearing a black and white striped jersey with the team script, in the contracted form “Juventus”.
Therefore, NFTs exploited both Juventus’ brands (denominated and figurative) and its unquestionable reputation.
The Rome court accepted the arguments of the black and white company, prohibited the defendant company from: further producing, marketing, promoting and offering for sale NFTs and digital contents with the image of Bobo Vieri, and ordered it to be withdrawn from its commercialization and removed from every website and Internet page.
Court, with an unprecedented decree for Europe, albeit in application of existing legislation, recognized non-commodity protection to Juventus’ famous trademarks, even if the company has properly registered the trademarks in class 9 (Downloadable digital files authenticated with non-fungible codes) has now become an almost mandatory step for all brands in Metaverse times. In this way, the company has already collected the advice of the European Union Intellectual Property Office also because it is active in the crypto game or blockchain game sector, that is, online video games based on blockchain technologies and using cryptocurrencies and NFTs.
In addition, it was determined that the granting of permission by Bobo Vieri to use his own image through the creation of NFT cards for the defendant company – which reproduced the player in different jerseys of the teams in which he played – does not preclude the need to apply for a license to use registered trademarks related to jerseys and team names As these are items for commercial sale.
It follows from this that the use of the tags in question (According to Art. 97 of the Copyright Act) of interest in publishing the image of Bobo Vieri due to the notoriety of the character, since such publications are not intended for scientific or educational purposes, and are not justified by the general need for information.
So the assertion seems to show that NFTs have legal autonomy regarding images or data associated with them, also because they also do not involve transfer of copyright.
In any case, the decision leaves many questions open about the role and responsibilities of the platforms in advertising and offering NFTs for sale. Above all, how will the defendant company be able to remove the illegal contents, also and above all in the secondary market where the ownership of the NFT is owned by a third party.