The first Italian decision on NFTs
While famous Hermès vs Rothschild and Nike vs. StockX disputes are still pending, Italy has issued the first European decision on Non-Fungible Tokens (“NFTs”).
In Juventus Football Club S.p.A. vs. Blockeras S.r.l. (July 20, 2022), the Court of Rome has issued an injunction relating to, inter alia, the minting and marketing of NFTs and the relevant digital contents infringing registered trade marks.
The famous Italian football club Juventus Football Club S.p.A. (“Juventus”) initiated preliminary injunction proceedings before the Court of Rome, claiming that Blockeras S.r.l. (“Blockeras”) was producing (“minting”), marketing and promoting online NFT digital cards, bearing Juventus’ word and figurative trade marks without authorisation.
In fact, in 2021 Blockeras launched an NFT project where digital football players cards were also offered for sale. These included a card of a well-known Italian player (“Christian Vieri”) wearing a Juventus jersey and showing the Juventus’ distinctive signs.
Blockeras sought the rejection of Juventus’ claims arguing, in particular, to have the right to market NFT digital cards showing Juventus trade marks, since the use of these signs should be included in the image rights granted by the football players to Blockeras. In addition, Blockeras claimed that Juventus’ trade marks were not registered in a class for “downloadable virtual goods”.
The Court of Rome’s decision on NFT and digital contents
In the present case, the Court first confirmed that Juventus’ trade marks are well-known, given the famous football teams associated with the club and the relevant merchandising activities carried out by the Italian club in many different areas.
Furthermore, the Court deemed that the registration of Juventus’ trade marks in class 9 of Nice Classification can be considered to include NFT digital cards, because the registration is broad, including terms such as: “downloadable electronic publication”.
Moreover, the Judge pointed out that Juventus also proved to be active in the crypto games field (or blockchain games), i.e. online video games based on blockchain technologies, and uses cryptocurrencies and NFTs.
Then the Court stated that Blockeras used Juventus’ trade marks for the NFT digital cards without any authorization.
Indeed, according to the Court, it is not relevant that Christian Vieri actually played in the Juventus’ football team and granted authorization to use its image for the creation of the digital cards. Moreover, the use of Juventus’ trade marks may not be justified by the interest of publication of Christian Vieri’s image in light of his notoriety pursuant to Article 97 of the Italian Copyright Law, since the sale of the digital cards only has a commercial purpose and not a scientific or didactic one.
Therefore, the Court of Rome ruled that the above Blockeras’ conduct amounts to:
- trade mark infringement: as there is a likelihood of confusion, based on the identity of the signs used on NFT digital cards;
- unfair competition: as Juventus and Blockeras are active in the same business field and Juventus’ trade marks are registered for classes including the type of business engaged by Blockeras.
Accordingly, the Court issued an Order preventing Blockeras from – inter alia – producing, marketing, promoting and offering for sale both (i) NFTs and (ii) digital contents bearing the Juventus trade marks.
This decision is certainly a benchmark for any future Italian and international decisions. In this regard, it is interesting to note that:
- The Court seems to say that a registration in class 9 could be sufficient to have protection for virtual goods.
- The Court also gives relevance to the fact that Juventus appears to be active in the same business field as Blockeras, i.e., among other things, crypto games and NFTs.
- Finally, the Court seems to distinguish between the NFT and its actual digital content in granting an injunction for both NFTs and digital contents. Thus, the Court seems to have considered the NFT as a “digital certificate” of the digital content (i.e. the cards), as also defined in the Draft Guidelines 2023. A relationship (certificate / content), that is still debated internationally and may also be relevant for other NFT pending proceedings.
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