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NFTs and Intellectual Property: What IP Owners and NFT Creators Need to Know By: James Gatto, Laura Chapman and Yasamin Parsafar Everything is being tokenized these days, including art, games, collectibles and much more. The record prices being fetched have created an NFT frenzy. This distribution model has created a new channel for monetization of creative IP. Given some of the unique aspects of NFTs, IP owners need to rethink their IP protection and licensing strategies. IP protection strategies should include specific protection relating to NFTs. Due to some of the unique aspects of NFTs, various new considerations need to be addressed when licensing IP. NFT creators need to be mindful of potential infringement issues when using third party IP and should also consider IP protection for their original creations. Many NFTs have incorporated third party IP in their NFTs without permission. In some cases, NFTs have included third party IP as part of the content. In other cases, third party IP alone has been the content. IP owners, whose content is being used in NFTs without permission, are taking note and ramping up their enforcement efforts. One well known IP owner, DC Comics, has fired a shot across the bow. After an artist made $1.85 million by selling NFTs, including characters he used to draw for DC (e.g. Wonder Woman and others), DC Comics sent a stern warning to the creative teams and freelancers employed by DC that unlicensed use of NFTs is a no-go! Specifically DC stated: As DC examines the complexities of the NFT marketplace, and we work on a reasonable and fair solution for all parties involved, including fans and collectors, please note that the offering for sale of any digital images featuring DC’s intellectual property with or without NFTs, whether rendered for DC’s publications or rendered outside the scope of one’s contractual engagement with DC, is not permitted. Considerations for IP Owners The IP owners impacted by NFTs can include: • brands that have famous trademarks, logos, and other brand identifiers; • game companies that have unique characters or game art • book, movie and other publishers that have unique characters and other IP; • artists who created have physical or digital works; • other IP owners IP owners grant licenses to their IP for many uses. Often they license specific uses (e.g., rights to a specific distribution channel) and at times they license broad use and reserve specific rights. Historically, however, most IP owners have not considered NFTs in their license deals. Nor have most IP owners considered NFTs in connection with their IP protection strategies. www.sheppardmullin.comPDF Image | NFTs and Intellectual Property
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