Welcome to our monthly NFT litigation roundup.
Non-Fungible Tokens (NFTs) are the topic of much debate, and the disputes around them continue to raise interesting legal questions and challenges.
When faced with such a high growth phenomenon, the law can take time to catch up. Boodle Hatfield is closely monitoring the developments and each month will bring you a roundup of the key NFT disputes to be aware of.
Interested in hearing more? You can sign up to future roundups and other content from Boodle Hatfield by following our subscription link here.
Hermès v Mason Rothschild
The background details of this case are covered in our February, April and May roundups.
- In the "MetaBirkins" lawsuit, where Hermès accused Rothschild of "attempting to capitalise on the goodwill of a leading luxury brand [and] one of its most iconic trademarks and products", Hermès is now seeking summary judgment (i.e. an early decision on the claim, without it progressing to trial).
- Hermès' arguments for summary judgment being awarded include:
- The similarity of the "Birkin" trademark and the "MetaBirkins" trademark, in particular the NFT of the digital handbag looking exactly like a "Birkin" physical handbag;
- The proximity and marketing of both as luxury handbags;
- Evidence of Rothschild causing confusion to commentators and consumers, which Hermès contends is "precisely" what Rothschild "intended". Hermès stated that following a survey, it had found "net confusion among the NFT audience of 18.7%;
- Rothschild's bad faith in "replicating" their brand and trying to "capitalise on the goodwill associated with Hermès"; and
- The level of sophistication of consumers in the marketplace who may not be able to determine whether the "MetaBirkins" was Hermès itself expanding into the digital goods marketplace, or Rothschild.
- This follows the opinion and order of Judge Rakoff dated 30 September, in which he sided with Hermès and rejected Rothschild's appeal of a decision which refused to dismiss Hermès' claims in May. Judge Rakoff determined that Rothschild's issues were not so "extraordinary" to require immediate review - "no argument provides a persuasive basis to substantiate an urgent appeal".
Miramax v Tarantino
- According to a Court filing, Quentin Tarantino and Miramax have decided to settle their long-standing NFT lawsuit over the "Pulp Fiction" NFTs.
- Discussed in further detail in our July roundup, Miramax sued Tarantino over his plans to release an NFT collection using footage from the 1994 film he directed, Pulp Fiction, which Miramax claimed it owned the distribution rights to. Tarantino's legal team filed a motion for judgment, arguing that the case should be thrown out because the NFTs were solely based on the screenplay of Pulp Fiction, which he believed was covered by a separate copyright.
- Both parties have now agreed to dismiss the lawsuit, releasing a joint statement: "The parties have agreed to put this matter behind them and look forward to collaborating with each other on future projects, including possible NFTs". The case was one of the first intellectual property disputes over NFTs, and had the case gone to trial, would likely have set a precedent for future NFTs based on films and other media.
About Boodle Hatfield
Boodle Hatfield has specialist art and digital assets teams offering expert know-how and pragmatic legal advice. The group brings together specialists from around the firm, who can advise on everything from corporate structuring and intellectual property through to tax, financial claims in divorce, dispute resolution and estate planning.
Click here to read more.
Interested in hearing more? You can sign up to receive content from Boodle Hatfield by using the subscription link here.
