Lessons from Juventus’ latest victory

The Facts

Blockeras S.r.l. had created and marketed a number of NFTs as part of its project “Coin of Champions”. These included digital cards featuring a photograph of Christian Vieri, who played for Juventus in the 1996-97 Scudetto winning season, wearing the Juve shirt and with a reference to the club. Blockeras had permission from Vieri to use his image but, importantly, no licence from Juventus.

Upon becoming aware of the NFTs, Juventus brought an action before the District Court of Rome, claiming infringement of its registered word marks JUVE and JUVENTUS and figurative mark of the black and white vertical striped shirt and logo of two stars (denoting the 24 Scudetti they had won at the time).

The Verdict

On 20 July 2022, the court granted Juventus’ request for a preliminary injunction forbidding the further production and sale of the NFTs in question and ordering the deletion of any online content intended to sell or promote the sale of such NFTs.

The court rejected Blockeras’ defence that it could use the image as it had Vieri’s consent and in any event, the Juventus trademarks were not registered for virtual products.

In the view of the court, securing the permission of Vieri to use his image did not preclude the need to secure authorisation to use the registered trademarks of the club whose shirt and name were reproduced on goods intended for sale.

In addition, the court found that given the reputation of the Juventus trademarks and its activity in the crypto sector (having recently signed a deal with Sorare), there was a high likelihood that the public may believe Blockeras’ products either to originate from Juventus, or to be connected to the club.

Lastly, the court found that the Juventus trademarks were in fact registered in the appropriate class (Class 9) of the Nice Classification (the international classification of goods and services for the purpose of registering marks), which covers downloadable digital files.

Lessons

So what are some key takeaways from this case:

For Rightsholders

• As the legal landscape around NFTs continues to evolve, this is a welcome example of courts adapting to address novel legal issues. The judgment, the first issued by an Italian Court concerning trademark protection in the metaverse, indicates that you can rely on traditional forms of legal enforcement to prevent infringement or other misuse of your property.
• You should consider which of your existing trademarks it would be sensible to protect in the metaverse. Registering such trademarks in Class 9 (among others) of the Nice Classification (including specifying the type of digital item authenticated by the NFT) is a sensible step to take in this regard.
• Rightsholders should think about updating their brand guidelines to cover third party use in the virtual environment.
• You should consider what surveillance you have in place to detect IP infringement in this space. Catching third parties minting NFTs that misuse your IP as early as possible, and promptly bringing the relevant IP infringement claim, should help to avoid too many of the offending NFTs circulating in the market.

For Issuers of NFTs

• Make sure you have all necessary consents to use the IP in the underlying asset which you intend to use to mint the NFT. In this case, Blockeras should of course have had a licence from both the player and the club for their respective IP. However, it is also worth considering that if the shirt Vieri was depicted in had shown the kit manufacturer and sponsor logos (being Kappa and Sony at the time), their authorisation could also be required.