A worldwide famous football club, one of the most prominent Italian strikers of his generation, the blockchain environment, NFTs (Non Fungible Tokens) and an allegedly trademark violation. The premises suggest the unraveling of an intriguing Italian story set in current times.
Juventus F.C. needs little introduction as is one of Italy’s most known football clubs, with a significative fan base in the country and abroad. Cristiano Ronaldo, Zinédine Zidane, Gianluigi Buffon, Alessandro Del Piero, Roberto Baggio et Michel Platini are just some of the names which have played for Juventus in its history, leading the club to winning more Italian championships than any other team (with an outstanding streak of 9 consecutive titles between 2011 and 2020).
Christian Vieri (now retired) also belongs to this circle of stars. Considered as one of the most prominent Italian strikers of his generation, he played for Juventus in the memorable 1996-1997 season when the club conquered national and international trophies.
Juventus F.C. is the owner, inter alia, of the JUVE and JUVENTUS word trademarks as well as of a figurative trademark consisting of its vertical black and white stripes motif, accompanied by two stars (with each star representing the club’s victory of 10 Italian titles).
The Italian football club discovered that NFTs (NFT collectible cards, in particular) and other digital assets representing the above mentioned trademarks as well as the image of Vieri, wearing the Juventus uniform, were created, advertised and offered for sale by an unauthorized third-party, an Italian company specializing in blockchain technology, Blockeras s.r.l.
These digital cards were initially offered for sale through the platform Binance NFT from April 7 to May 4, 2022, but a secondary market would allow the legitimate owners of these cards to resell their assets to other buyers/collectors, thus recognizing a fee to Blockeras – being the creator of the cards – for each new transaction.
While Vieri, through the company managing his image rights, had actually authorized the use of his image for this blockchain project, no authorization was granted by Juventus F.C.
The Italian football club applied to obtain a preliminary injunction from the Rome Court to immediately stop the allegedly infringing activities. With its decision rendered on July 20, 2022 (case No 32072/2022) the Court has accepted Plaintiff’s requests shedding light in the complicated relationship between IPR and the blockchain environment. In particular:
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- Juventus trademarks are well known given that the club is the most successful Italian football team and the one with the largest fan base. The club has a wide array of merchandising activities in different sectors (apparel, games, accessories, etc.), including the digital space, NFTs and crypto-games.
- The creation and the offering of digital cards bearing the Juventus trademarks by Blockeras constitutes trademark infringement and an act of unfair competition. Blockeras has used Plaintiff’s trademarks without authorization, for a commercial purpose (indeed, the selling of the digital card at issue – 68 in total – has generated returns for almost USD 36,000) and this use is likely to confuse consumers about the origin of the NFTs. It is further argumented that the renown and fame of a specific club with which a footballer has played contributes to the value of these cards.
- The Court ordered Blockeras to stop the creation, promotion and offering for sale, directly or indirectly, of NFTs or of any other digital asset reproducing the image at issue and/or the Juventus trademarks.
- The Court also ordered Blockeras to withdraw the same NFTs and digital assets, or to delete them from any website or webpage where these are advertised or offered for sale, thus taking action also towards third-party platforms where they may still be available.
- The above was accompanied by a penalty payment set at 500 euro for each day of delay in the execution of the provision or for each violation of the injunction.
As the blockchain technology has uncovered a new scenario in the digital space it is clear that more and more similar conflicts will arise in the near future. Brand owners have recently been very active trying to protect their brands in response to the crypto-hype. While enforcement procedures remain, quite often, still unclear, clarifications coming from Trademark Offices are paving the way for a consensus on how virtual goods and NFTs should be considered. To this end, and important addition is the guidance note issued by the European Intellectual Property Office (EUIPO) in late June on its approach to classifying these items:
- Virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing).
- The 12th Edition of the Nice Classification will incorporate the term downloadable digital files authenticated by non-fungible tokens in Class 9. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items. For the Office, the term non fungible tokens on its own is not acceptable. The type of digital item authenticated by the NFT must be specified.
Services relating to virtual goods and NFTs will be classified in line with the established principles of classification for services.
As the situation surrounding the protection of trademarks in the metaverse is clearing, the same is not always true when it comes to detection and enforcement.
IP Twins is carefully monitoring updates on these new fronts and developing new tools to tackle infringing activities also in the decentralized Internet.
Source: Tribunale ordinario di Roma, Diciassettesima sezione imprese civile, 19 Luglio 2022, RG n. 32072/2022.
