The Court of Rome, in a preliminary order dated July 20, 2022 (available in English HERE), is the first Judge at the European level to order an injunction from the creation and marketing of Non-Fungible Tokens infringing registered trademarks.
The football club Juventus Football Club S.p.A. sued before the Court of Rome a company producing Non-Fungible Tokens (NFT) associated with digital collectible “figurines” of a well-known Italian football player, reproduced in a game action with the team uniform, in which the registered trademarks of the plaintiff were clearly visible.
The Court, with a decision (which was not appealed) dated July 20, 2022, ordered an injunction – accompanied by a penalty for each day of delay or infringement – from “further production, marketing, promotion and offer for sale, directly and/or indirectly, in any manner or form , of the NFTs (non-fungible tokens) and digital content referred to in the narrative, as well as any other NFTs (non-fungible tokens), digital content or products in general bearing the photograph referred to in the narrative, even if modified, and/or the Juventus trademarks referred to in the narrative, as well as the use of said trademarks in any form and manner”.
The decision stands to be a global landmark at a time when strong attention is being paid to the legal aspects of this (relatively) new digital tool, which still does not find its own clear legal place and definition. It therefore stands as an absolute novelty, not only for being, to our knowledge, the first at the European level to have ordered an injunction from the creation of NFTs – to date only a couple of similar decisions are known, issued recently in Turkey and Singapore, while the better-known court proceedings pending in the United States have not yet come to a conclusion -, but also for some of the considerations it contains and, of course, for the additional food for thought it offers.
In this article we will focus on a first reason for interest, regarding a concept which should be taken for granted in principle, but that maybe is not that immediate when talking about certain aspects of NFT technology.
The order explicitly confirms the fact that the creation of NFTs – which may be considered “goods intended for commercial sale” in the words of the Court – requires specific authorization from the trademark owner, of which it therefore constitutes an infringement in its own, distinct from the infringement constituted by the use of the trademark in the digital images associated with the NFTs.
Thus, the rationale of the same precautionary order is explained, which not surprisingly keeps NFTs and corresponding digital content quite distinct, ordering the injunction from the “production, marketing, promotion and offer for sale, direct and/or indirect, in any manner or form whatsoever”, on the one hand, “of NFTs (non-fungible tokens)” and, on the other, “of the digital content referred to in the narrative”, as well as always, on the one hand, “of any other NFTs (non-fungible tokens)” and, on the other hand, of any other “digital content or product in general bearing the photograph referred to in the narrative, even if modified, and/or the Juventus trademarks referred to in the narrative, as well as the use of said trademarks in any form and manner”.
This is important because relevant consequences can arise from these kinds of considerations on the practical side, and which significantly constitute the main topics of discussion in U.S. lawsuits (now well known, even if not yet decided) involving the fashion house Hermes against the artist Mason Rothschild and Nike against StockX. In the latter case, in particular, this NFT/digital content dichotomy cannot be ignored, and the Judge will have to decide whether the creation of an NFT can have such intrinsic value as to outweigh, from the standpoint of infringement, the fact that it constitutes in principle “only” a digital certificate of ownership of the asset associated with it; an asset that, hypothetically, could also be legitimate in itself.
Header image: juventus.com
