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Journal of Intellectual Property Law

Abstract

Within the last decade, internet users have witnessed the birth, rise, and mainstream popularity of the Non-Fungible Token, or “NFT.” Nearly ten years after the creation of the first NFT, there is now a wave of first impression litigation surfacing which questions the implications of NFTs on intellectual property law. This Note analyzes the intersection of Non-Fungible Tokens and trademark law in the United States.

Until recently, it has been unclear whether Non-Fungible Tokens are eligible to be protected under long-standing federal trademark laws. This includes allegations of NFTs infringing upon existing trademarks, as well as trademarked NFTs being infringed upon. In January of 2022, luxury fashion brand Hermès filed a lawsuit alleging infringement of its famous Birkin handbag trademark by an NFT. A federal court found the two-prong test form Rogers v. Grimaldi appropriate for evaluating such claims of trademark infringement in artistic works. The court applied this precedent in a case later that year where the creator of the well-known Bored Ape Yacht Club NFT collection alleged infringement against an artist selling similar digital works.

This Note concludes that reliance on Hermès International v. Rothschild and its interpretation of the Rogers test appears to be the current approach favored by courts, as supported by Yuga Labs v. Ripps. This newfound precedent in both categories suggests that NFTs are not only eligible for Lanham Act protection, but also works capable of infringing trademarked works in other mediums. NFT creators and brands looking to expand into the metaverse should take note of this first wave of litigation to ensure they take advantage of all available legal avenues to protect their works.

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