The Top IP Events That Affected Emerging Technologies in 2022

“Non-Fungible Tokens (NFT)”, “Blockchain”, “Metaverse”, “web3” and “Artificial Intelligence (AI)” will be key discussions and developments in the field of Intellectual Property (IP) Law in 2022 It is a buzzword that asked for. This overview covers his five key topics in intellectual property law that have impacted the growth and mainstream adoption of these emerging technologies in the last year.

1. USPTO Trademark Activity and Application Guidance

Trademark filings related to blockchain technology and NFT goods and services have resulted in a large number of trademark filings with the United States Patent and Trademark Office (USPTO). In 2022, the number of applications will double what he did in 2021. There are many new applications across industries such as hospitality, finance, pharmaceuticals, entertainment and real estate. Famous brands that have filed to protect their goods and services using this technology include Nike, Gucci, Visa, Home Depot, University of Alabama, and Universal Music Group.

More applications will also lead to more screenings in 2022 related to these technologies. Unclear descriptions of goods/services and inadequate samples were among the top issues raised in office rejections and were discussed in his recent USPTO webinar on new technology trademarks.

The 12th edition of the Nice Classification includes new entries and amendments to clarify the description of these techniques.

Class 9: Adding ItemsA downloadable digital file authenticated by a non-fungible token [NFTs]“; Replaced “downloadable computer software for managing cryptocurrency transactions using blockchain technology” with “Downloadable computer software for managing cryptocurrency transactions using blockchain technology”.

Class 42: Change the item “virtual currency mining/crypto mining” to “Crypto Asset Mining / Crypto Mining”.

The USPTO has adopted these changes effective January 1, 2023.

2. NFTs and Trademark Infringement Lawsuits

It is surprising that the large number of NFT-related filings at the USPTO reflects the wide variety of items that can be represented by NFTs, including but not limited to digital art, tickets, sneakers, clothing, and certificates of attendance. not. The three lawsuits listed below are among the first to be filed in the United States and globally, and may have a significant impact on the investigation of trademark issues inherent in this new medium of distribution.

of. Artistic expression and NFT – Hermès International v. Rothschild (1:22-cv-00384)

In January of this year, Hermès spoke to artist Martin Rothschild about the launch of Rothschild’s “Meta Birkin” NFT, which depicts an image resembling the famous Hermès Birkin purse but adorned with colorful fur. The lawsuit filed in the Southern District of New York contains allegations of trademark infringement, which Rothschild claims are protected by First Amendment rights and Rogers’ test. Rogers vs Grimaldi, 875 F.2d 994 (2d Cir. 1989) applies. On May 5, 2022, the court issued an order dismissing Rothschild’s motion to dismiss, further expanding the order on May 18. Rogers‘A test applicable ‘at least in part’ to analyze trademark infringement. Nevertheless, Hermès’ amended complaint, which includes sufficient factual allegations that Rothschild’s use of the trademark is artistically irrelevant and that Rothschild’s use is plainly misleading, renders this The motion was denied. On December 30, 2022, the court also denied Rothschild’s attempt to grant this claim through a motion for summary judgment, granting summary judgment to Hermès on trademark infringement and dilution claims. dismissed the petition. The grounds for these sentences will be made public on his January 20, 2023, and a trial is scheduled for his January 30, 2023.

b. Blockchain provenance, IP, etc. – Yuga Labs, Inc. vs. Ryder Ripps and others (2:22-cv-04355)

In June 2022, Yuga Labs, a Web 3 native company and owner of the prominent NFT collection Bored Ape Yacht Club (BAYC), slammed conceptual artist Ryder Ripps and others for conduct related to Ripps. filed a lawsuit in the Central District of California against Replicated NFT collection called RR/BAYC. The RR/BAYC Collection will feature the same images as the BAYC Collection, with each RR/BAYC NFT pointing to an image of his specific BAYC NFT, indicating a disclaimer to the purchaser via the website. I’m here. Defendant is accused of using the same or similar trademarks owned by Yuga to advertise and sell his own NFT collection. Yuga alleges unfair competition, false advertising, cybersquatting, and trademark infringement. Ripps filed his Anti-SLAPP motion to strike/dismiss, which was denied by the court, and the Anti-SLAPP motion was quickly appealed by the defendants. Defendants said their actions related to speaking out on public issues related to the alleged neo-Nazi culture and racist community. Rogers test.

Initially focused on trademarks, defendants filed a counterclaim on December 27, 2022, alleging a declaratory judgment without copyright, libel, and willful infliction of emotional distress by Yuga Labs. I asked for The case will go to trial this year.

c. Authentication of physical items by NFT – Nike, Inc. v. Stockx LLC (1:22-cv-00983)

Sneaker innovator Nike accused resale platform StockX of going too far in launching NFTs to trade purportedly authentic shoes, including Nike’s. , the Southern District of New York, alleging that StockX engaged in the unauthorized and infringing use of Nike’s well-known trademarks by using Nike’s registered trademarks and casting NFTs utilizing Nike’s goodwill. filed a lawsuit against StockX. Additionally, Nike claims that StockX does not sell authorized products, despite StockX’s representations. The specific allegations are Trademark Infringement, Unfair Competition, Misrepresentation of Origin/Unfair Competition, Trademark Dilution, New York Damage and Dilution to Business Reputation, Counterfeiting, and False Advertising.

StockX counters that it uses NFTs to track ownership of legitimate physical products, and uses the trademark in a way that is unambiguous when referring to Nike. They claim their certification process is top-notch, and have previously been praised by Nike. StockX’s response includes the following defenses: trademark fair use, first sale doctrine, Nike was not harmed, Nike’s failure to mitigate harm (if any), estoppel, Acquisition, and lack of causality. Both parties are currently in the investigation phase, and the fact-finding is currently scheduled to conclude in January 2023.

The case highlights the issue of supply chains and counterfeit goods, as well as related advertising on certification of physical products by NFTs.

3. A physical doll born from the Metaverse – Roblox Corp. and others v. WowWee Group Ltd and others (3:22-cv-04476)

Popular online gaming platform Roblox and toy maker Jazwares are seeking to block WowWee’s physical dolls “from the metaverse” by filing a lawsuit against WowWee. In August, the plaintiff claimed that works created in the Roblox ecosystem and a series of physical dolls based on Roblox’s “stock-like” figures infringed Roblox’s copyrights and trademarks, alleging that they were in California. We filed a complaint in the Northern District. alleged infringement, false association/false designation of origin, infringement of trade dress, willful interference with contractual relationships, and breach. California False Advertising, California Unfair Competition.

Defendants reject the allegation that Roblox’s Terms of Service (ToS) expressly allowed creators to own user-generated content, but that the ToS was unilaterally changed just before filing the lawsuit. I have responded with a motion to do so. More specifically, it cannot sue under copyrights not owned by Roblox (including that the avatar is composed of unprotectable ideas and mundane elements), and plaintiffs can seek additional registrations. It details the inability to amend the complaint to include. Roblox’s own arbitration clause applies.

As interoperability grows between the various metaverses and the physical and virtual worlds, this case becomes more relevant to the licensing and assignment language of the terms of service and how the metaverse treats IP related to user-generated content. It can have wide-ranging implications.

4. AI’s role in copyright and other IP

As Approved by USPTO and United States Copyright Office (USCO)., as summarized by IPWatchdog last month, IP issues around AI are complex, growing in urgency and importance. In August 2022, in analyzing who or what could be an inventor, the Federal Circuit ruled that “AI cannot be an inventor because Congress has ruled that only natural persons can be inventors.” I can’t,” he affirmed. This was his one of Dr. Stephen Thaler’s assignments on guiding discussion and rulemaking on IP and AI-generated works. Thaler likewise met resistance in the copyright context of the statutory requirement for human authorship. In February 2022, Dr. Stephen Thaler’s AI-generated artwork “A Recent Entrance to Paradise” was denied a copyright application by his USCO, where AI is listed as the author. In response, Thaler filed a lawsuit against his USCO in June 2022, overturning the decision and reinstating the registration application for AI-generated artwork.

The question remains as to where on the “creative production spectrum” (from wholly human-made to wholly machine-made) a work qualifies for registration. As a result, artworks, graphic novels, articles, and various other works remain in AI-generated purgatory.Meanwhile, the United States Copyright Office and his USPTO each watched positively On issues involving the intersection of IP law and AI, a recent letter by Senators Tillis and Senators Coons, dated October 27, 2022, could provide impetus for the first interagency committee on the topic.

5. Resale royalties on Open NFT Sea

NFTs appeal to many artists because they can easily collect and distribute resale royalties via smart contracts. A resale royalty, also known as a “droit de suite”, is a fee paid to an artist each time a work is resold on the secondary market. Some blockchains and his NFT marketplaces use smart contracts to automatically implement resale royalty payments according to the artist’s instructions, but the decision to include resale royalty payments is subject to change. Some are left up to artists and buyers. This is because various blockchains, marketplaces, artists and other players in the ecosystem are considering whether to manage resale royalties through smart contracts or choose not to manage them, so the web3 community has sparked a heated debate between Announcements and discussions from key players have varied and changed, but some of the key ones include: high seas, super rare, Coinbase NFT, Yawww, magic eden, manifold, and Hedera. Downstream resale royalties may be difficult to enforce due to contractual privacy concerns, butsocial contractConsiderations are made, especially as public blockchains reveal where the money is going.

Special thanks to Kayla Lawless for assisting with the research to support this article.