NFTs: Key Legal Developments & Litigation Scorecard (12/19/22)
Major NFT Developments, Where Key NFT Litigation Stands, and Why You Should Care (Including Detailed Analysis of the Current State of Play)
Welcome to my final NFT Update newsletter of the year! After all, even the courts shut down as the end of year approaches (although justice never does, right?). My next newsletter will be January 9th, 2023 - destined to be a bold new year with bold new, and very real, NFT activity (and certainly even more significant Web3-related disputes and litigation amidst FTX’s spectacular fall and uncertainty of it all). So let’s do this one last time for 2022, holiday style! And, if you’ve enjoyed my newsletter this year, please share it (it makes for an excellent holiday gift!). (And check out Creative Media, my media, entertainment & tech law and business advisory firm - think of us as your external General Counsel and Biz Dev team on Web3/NFT and media/tech matters.)
I. NFT “QUICK HITS” (KEY NEW WEB3 DEVELOPMENTS)
Here are this week’s “Quick Hits” of major Web3 and NFT news.
(1) In the words of one pundit, Donald Trump’s new NFT trading cards are “the grift that keep on grifting.” While I’m long and bullish on NFTs, the Donald’s “big announcement” is certainly not what I have in mind. This is: NFTs that are “real,” as I recently wrote in TheWrap. The Mar-A-Lago resident’s latest “act” smacks of desperation, not innovation.
(2) Not a great week for Tom Brady, Justin Bieber, Jimmy Fallon, Snoop Dog or Madonna either. They were just a few celebs named in a major securities-based lawsuit against Bored Ape creator Yuga Labs (more on a different Yuga lawsuit below) and payment platform Moonpay. Call it plaintiff’s lump of crypto coal for the holidays. And you can bet I’ll add this one to this newsletter for ongoing tracking. Expect celebs to shy away from crypto in 2023 (and try to hide from their endorsements in 2022), as discussed in this The New York Times article.
(3) Amidst all the Web3 tumult, what’s a brand to do? Check out this “worth reading” article titled “Looking Back at the Rise of NFTs & Lessons for Brands Going Forward.” Love this line from it: “A field of opportunity can also be a minefield for the unwary.” So true, so true. With massive opportunity comes very real risk, because the “rules of the game” are few and far between. Innovators are writing them now, establishing how traditional IP law (copyright/trademark), among others, should be applied in the Web3/NFT context. So tread forward - don’t shy away - but tread wisely. Build the right team and advisors around you. That’s what we’re here for!
(4) And one more time, ‘tis the season for my annual ten predictions for media, entertainment and tech! Despite the nay-saying, and despite the ice getting ever-deeper in this crypto winter, NFTs will break out into the early mainstream in 2023, including for film and television. That’s Prediction #9 in my annual “10 Predictions for Media, Entertainment and Tech” just published in TheWrap that you can read here. I’ve already hit at least one of my predictions (check out Prediction #3 about Netflix), so trust me on this one too!
(5) And don’t forget the world of music! NFT activity accelerates here too. Case in point: Warner Music Group. WMG just announced its latest NFT investment in digital fashion retailer DRESSX.
(6) NFT LA is not so far away! Start your new year planning by locking in March 20-23, 2023 in your books! I plan to be there - physically IRL, not digitally ….
(7) And now for something very different - Comcast is now poised to be the #1 contender to buy (really, merge with) Netflix. Read my latest article about the mother of all potential antitrust unintended consequences that could reshape the media and entertainment worlds.
II. THE WEEKLY NFT CASE TRACKER
Here are the headline updates from the past week. You can dig in much deeper into each case in Section III below.
Nike v. StockX. Nike is the most successful apparel/fashion brand in the NFT world. In this case, trademark likelihood of confusion butts up against “fair use.” On December 15th, the court ordered each party to file a letter by today, December 19th, that identifies the discovery they seek in connection with Nike’s unjust enrichment claim. The court further ordered the parties to file a status letter regarding outstanding discovery disputes, and then to hold a remote discovery conference on December 30th - during the last week of the year when many try to shut down. Bah Humbug indeed!
Yuga Labs v. Ryder Ripp. Yuga is creator of Bored Apes and CryptoPunks. Yet another “infringement meets fair use” case. Yet again, no major updates this past week. The court still has Ripp’s motion to dismiss under consideration.
Hermes v. Mason Rothschild. High end fashion brand sued artist Rothschild for infringement for creating digital versions of its famed Birken bags. Yet again, no major updates this past week. The jury trial is still set for January 30th, 2023.
Breach of Contract Cases
Luna Aura LLC v. 3LAU Entertainment. Plaintiff sued DJ and producer 3LAU for breach of contract in connection with the song “Walk Away” - related to Blau’s NFT auction that generated $11.7 million. Each party made their first appearances before the court on December 14th, and the first pre-trial conference is set for January 20th, 2023.
Friel v. Dapper Labs. Buyers of NBA Top Shots sued Dapper for allegedly selling unregistered securities. Yet again, no major updates this past week. Dapper’s motion to dismiss is pending.
Theft of Property Cases
LCX AG v. John Does Nos. 1-25. A European cryptocurrency exchange sued unknown hackers for theft of $8 million in NFT assets. Yet again, no major updates this past week. Defendants’ motion to dismiss is pending.
Criminal Insider Trading Cases
U.S. v. Chastain. The DOJ indicted a former OpenSea employee for wire fraud and money laundering in what the Feds call the first NFT insider trading case. Yet again, no major updates this past week. The court most recently rejected Chastain’s motion to dismiss in October.
Key NFT Cases Outside the U.S. (& Resolved/Settled Cases That Matter)
Keep reading below for key NFT cases to track from the U.K., Singapore and China - as well as NFT cases that recently settled (but still “matter” and should be considered).
III. THE FULL NFT LITIGATION BRIEFING, ANALYSIS & SCORECARD
Here’s my full briefing and analysis for the major NFT cases tracked above. (Reach out at email@example.com with tips or recommendations for more key NFT cases to track.)
(1) INFRINGEMENT CASES
(i) Nike v. StockX
StockX operates an online resale platform that sells NFT pictures of actual Nike shoes. Nike claims infringement and asserts that StockX is intentionally deceiving buyers into believing that its NFTs are authorized by Nike. But StockX raises a first sale doctrine defense, claiming that each NFT merely functions as a “claim ticket” for actual physical Nike shoes that are stored inside an actual vault. In its words, its NFTs “are absolutely not ‘virtual products’ or digital sneakers” - but rather its use of Nike’s trademarks are for descriptive purposes only (i.e., fair use).
Last week, on December 15th, the court ordered each party to file a letter by today, December 19th, that identifies the discovery they seek in connection with Nike’s unjust enrichment claim, as well as an explanation of the factual and legal basis for this discovery. The court further ordered both sides to file a status letter of any outstanding discovery disputes - and then to hold a remote discovery conference on December 30th. Previously, the magistrate ordered the parties to schedule a second settlement conference and extended the deadline for completion of all discovery until January 20th, 2023 - and scheduled the next pretrial conference for February 3rd, 2023.
Why should StockX settle pre-trial? Well, first, they’re up against Nike and its blank litigation checkbook. Nike won’t let go, because it has no control over StockX’s use of its trademarks in the context of NFTs. Let’s face it. Nike plays hard and “just does it” in the NFT world (the most successful fashion brand playing in that world). Nike also has solid arguments that StockX intentionally misled its customers into believing that Nike was somehow involved.
(ii) Yuga Labs v. Ryder Ripp
Creators of Bored Apes sued a self-proclaimed “satirist” who created and sold digital replicas of Yuga’s same Bored Apes (but with a stylized disclaimer that purportedly made it clear to buyers that his were not the real deal). Yuga argues that Ripp made millions stealing its IP and trading off its Bored Apes brand. Ripp claims fair use (satire and protest). He also counter-sued, claiming that Yuga is trying to shut down his free speech in “an attempt to silence an artist who used his craft to call out a multi-billion dollar company built on racist and neo-Nazi dog whistles.”
No major updates for the past several weeks. The court is still considering Ripp’s recent motion to dismiss (and separate anti-SLAPP motion), which it took under submission and without oral argument. Earlier, the court referred the case to private mediation to take place not later than January 23rd, 2023, scheduled a pre-trial conference for June 9th, 2023, and set the jury trial for June 27th, 2023.
Ripp’s Bored Apes are essentially exact replicas. Given this reality, and even with Ripp’s disclaimer, it’s likely that the jury would find infringement (and not allow a satire defense swallow up the entire doctrine of copyright). But now that the trial court has ordered mediation, we may not get to that point. Hey Ripp, settle this thing!
(iii) Hermes v. Mason Rothschild
Fashion brand Hermes sued artist Mason Rothschild for infringement based on the artist’s creation of “MetaBirkins” - i.e., digital versions of its famed Birkin handbags for the metaverse. Rothschild asserts a First Amendment “artistic relevance” fair use defense - a doctrine that requires courts to balance the “public interest in avoiding consumer confusion” against the “public interest in free expression.”
No major updates this past week. Earlier, on November 30th, the court set the date for the jury trial for January 30th, 2023. Additionally, the parties’ motions for summary judgment are pending. But trial courts typically don’t like to end litigation pre-trial on summary judgment based on just the pleadings and documentary evidence alone.
Importantly, the U.S. Supreme Court recently heard oral arguments in Andy Warhol Foundation v. Goldsmith, a case that addresses the scope of fair use in the context of art. Based on the Court’s own precedent in Google v. Oracle (a recent fair use case in the software context), my bet is that it will broaden the scope of fair use, which will most certainly impact the world of NFTs by giving Web3 players more leeway to create NFTs based on existing copyrighted works (and then claim fair use). That could be a positive development for Rothschild’s fair use defense in this case. But the trial court here previously denied Rothschild’s motions to dismiss and continues to explore whether consumers were actively misled to believe that Hermes had expressly endorsed or supported Rothschild’s artwork. And ultimately I believe the court’s answer here will be “yes” - and will find infringement to some meaningful degree.
(2) BREACH OF CONTRACT CASES
Luna Aura LLC v. 3LAU Entertainment
Plaintiff, whose real name is Angela Anne Flores, sued DJ and producer 3LAU (whose real name is Justin Blau) on November 11th in connection with the song “Walk Away” that she co-wrote and on which she also performed. Flores claims breach of contract and unjust enrichment - that she is owed royalties. All this stems from an NFT auction by Blau that generated $11.7 million
Each party made their first appearances before the court on December 14th, the first real activity since plaintiff Flores filed an amended complaint on November 23rd. Previously, the court set the first pre-trial conference for January 20th, 2023.
It’s too early to tell, because the case is so fresh. But this one should be closely tracked, because the NFT market opportunity in the world of music (and entertainment in general) is great. So are the complexities, however, given all of the fractionalized intellectual property and complex music licensing issues involved. That’s part of the realm in which my background is deep. Very.
(3) SECURITIES CASES
(i) Friel v. Dapper Labs
Buyers of NBA Top Shot “Moments” sued NFT minter Dapper Labs for selling unregistered securities. Dapper claims that its NFTs are not “securities” under the SEC’s relevant “Howey Test,” because its NFTs were “objects of play and not for investment or speculative purposes.” In other words, there was no reasonable expectation of profit. The core securities issues here could impact a broad swath of NFTs.
No major updates in the past several weeks. Most recently, plaintiffs filed their opposition briefs to Dapper’s Motion to Dismiss, which is pending.
Buyers of these NFTs had no issues with “Moments” when NFT prices were going one direction only - i.e., upward. But now that reality has set in, speculators (most of whom are young, unsophisticated investors) feel cheated in what they had essentially viewed as a lucrative “sure thing.”
(ii) Other Key Securities Developments
The SEC also continues to investigate Yuga Labs to determine whether certain Yuga NFTs are akin to stocks that should be subject to SEC disclosure rules. I’ll continue to track this critical development which may impact a broad swath of NFTs.
(4) THEFT OF PROPERTY CASES
LCX AG v. John Does Nos. 1-25
European cryptocurrency exchange LCX sued unknown hackers in the New York State courts for theft of assets worth $8 million held in digital wallets on Ethereum.
No major updates this past week. Defendants’ motion to dismiss continues to be pending, as is anonymous defendants’ motion to quash subpoenas to show up at trial.
The most fascinating aspect of this case is that it addresses the seemingly impossible issue of “who to sue” in cases where it is impossible to identify the bad guys in a blockchain-based Web3 ecosystem of unidentified users (which will become increasingly commonplace). Here, the court permitted the plaintiff to serve legal documents on the anonymous defendants by airdropping them to their Ethereum accounts via “a special-purpose Ethereum-based token” (what it called a “Service Token”). The Service Token contained a hyperlink to the blockchain address, so that when the unknown person associated with that address clicked the link, it would take them to a website with all the relevant court papers (which would qualify for accepting service of process). Interestingly, the airdropped service of papers on the unknown defendants in this case worked. Their attorneys have showed up to defend the lawsuit.
(5) CRIMINAL INSIDER TRADING CASES
U.S. v. Chastain
In May, the Department of Justice indicted former OpenSea employee Nathanial Chastain, charging him with wire fraud and money laundering in what the Feds call the first NFT-focused insider trading scheme. Chastain, a product manager, was responsible for choosing which NFTs OpenSea would highlight on its homepage. He is alleged to have “exploited his advanced knowledge of what NFTs would be featured … for his personal financial gain” by secretly purchasing soon-to-be-featured NFTs and selling them at significant profit after OpenSea did, in fact, feature them.
No major updates this past week. Most recently, in late October the court rejected Chastain’s motion to dismiss, ruling that his defenses were both “premature” and “without merit.”
It’s never great to be the first insider trading defendant. The Feds have too much to lose if they don’t win. Chastain will plead guilty in advance of trial to avoid the book being thrown at him.
(6) KEY NFT CASES OUTSIDE THE U.S.
(i) ENGLAND: Osbourne v. Persons Unknown
Osbourne sought to enjoin both (1) the unidentified defendants who had stolen her two “Boss Beauties” NFTs and placed them in their OpenSea wallets and (2) the OpenSea marketplace itself - from further transferring those stolen NFTs.
The court most recently granted Osbourne’s requested injunction, finding that “there is at least a realistically arguable case that such tokens are to be treated as property as a matter of English law.” Importantly, the English court also ordered OpenSea to reveal information about the unidentified wallet holders, despite the fact that OpenSea has no physical presence in England.
This one is an important case to follow, particularly because (much like the China case below) it places legal obligations and potential liability on the NFT marketplaces/exchanges themselves for the “bad acts” of users (as well as to reveal private information about its users).
(ii) SINGAPORE: Bored Ape Yacht Club NFT #2162
The owner of Bored Ape NFT #2162 had used his Ape as collateral to borrow cryptocurrencies from an unidentified person known only as “chefpierre.” When the Bored Ape owner defaulted on its loan, chefpierre transferred the NFT to his wallet and listed it for sale on OpenSea, even though the loan document expressly stated that chefpierre would not foreclose on the NFT.
Most recently, the High Court of Singapore held that the Bored Ape NFT can be considered “property” that is subject to an injunction. The judge pointed to the “growing judicial support for ‘deploying property concepts to protect digital assets.’” The judge further noted that while “cars, books, wine and luxury watches … are a few examples of highly sought-after items for collectors, [f]or digital nomads, especially those steeped in the world of blockchain and cryptocurrencies, NFTs have emerged as a highly sought-after collectors’ item.” As a result, it enjoined chefpierre from transferring it. Much like in the U.S. LCX case above, the court permitted legal documents to be served on chefpierre via his social media account and his Etherium platform-based NFT itself.
This one is fascinating for similar reasons to the LCX AG case - i.e., solving the issue of service of process (legal papers) on Web3 persons unknown - as well as for its conclusion that laws related to “property” can apply to digital assets. Critically, the court’s conclusion that NFTs are property - which makes sense - also means that it’s at least questionable whether industry terms and conditions (T’s & C’s) that give platforms the ability to bar users for violations of those T’s & C’s are legally permissible. It’s at least arguable that such actions could be considered to be illegal confiscations of property.
(iii) CHINA : The BigVerse Litigation
An unknown individual minted an NFT of a cartoon tiger on NFT China, a popular Chinese NFT marketplace (a la OpenSea). The cartoon was based on the copyrights of the plaintiff, who claimed infringement and theft. Rather than sue the anonymous NFT minter, the plaintiff sued BigVerse, the parent company of the NFT platform.
Much like in the English Osbourne case above, the court held that the NFT platform itself (BigVerse) was liable for violating the plaintiff’s “right to disseminate works through information networks” and failing to verify that the individual who minted the NFT actually owned the requisite copyright in the artwork. The court ordered BigVerse to both pay monetary damages and remove the NFT from circulation.
This case is important because it places legal obligations and liability on the NFT marketplace itself for the “bad acts” of its users.
(7) IMPORTANT SETTLED/RESOLVED LITIGATION
Yes, these cases have settled out of court. But their lessons live on - and should be heeded.
(i) Miramax v. Tarantino
The studio sued auteur Quentin Tarantino for selling NFTs based on his actual script pages for the film Pulp Fiction, asserting that Tarantino had granted it all NFT rights. Tarantino had granted most rights to the studio, but expressly reserved the right of “screenplay publication.” Miramax sued for copyright and trademark infringement – i.e., Tarantino’s NFTs did not fall within his “narrowly-drafted” reserved rights and that it, instead, had acquired all NFT rights via its contract’s “broad, catch-all rights” that included “all rights now or hereafter known in all media now or hereafter known.”
The parties settled in September and the court formally dismissed the case in October.
Terms of the settlement are confidential. The studio wanted to make sure that no precedent was set that could be used to hurt it in future NFT cases. So this case gives no formal guidance. But it does underscore the need for both sides of any IP deal to contemplate NFTs and all other future tech-transformed possibilities (and draft their contracts as broadly as possible as a result).
(ii) Halston Thayer v. Matt Furie (& Others)
Halston Thayer, an NFT buyer, filed a lawsuit against crypto-artist Matt Furie, asserting that Furie engaged in a “scheme to artificially inflate the value” of his FEELSGOODMAN Rare Pepe Card NFT. Thayer claimed that Furie misrepresented the number of NFTs that would be offered for sale and essentially duped him into “grossly overbidding” for his NFT. Thayer claimed that he was led to believe that there would be only 1 such NFT (and that’s why he paid $507,084 for it). But after he paid, Furie allegedly released 46 additional identical tokens.
The court dismissed the case in August after the parties settled.
Did Furie misrepresent what he was selling? And did he fraudulently induce Thayer to buy based on those misrepresentations? We’ll never know, because the parties settled. But the obvious lesson is “buyer beware” in this nascent world of NFTs. Lots of explicit misrepresentation, but also lots of intentional confusion and inducement. Very few, if any, standards now exist regarding required disclosures.
IV. CLOSING THOUGHTS
Watch my recent NFT webinar - I discuss the key business issues, risks, specific sectors of opportunity, and even more of the context that ties it all together.
If you like this newsletter, share it! Industry expert Jim Louderback calls this newsletter “a must read” and “fascinating look at how these new technologies are being hashed out in court.” As you know, I don’t charge for it - it’s entirely free. But - it also takes a lot of time - researching it, analyzing the cases, and writing it.
And to learn more about NFTs, check out these resources on the NFT Legal Update website (which you can access here). Reach out to me to me at firstname.lastname@example.org to discuss your own questions or schedule a private consultation - and check out Creative Media, my legal services and business advisory firm. We uniquely offer flat fee legal and business advisory services in addition to hourly billing.