NFTs: Key Legal Developments & Litigation Scorecard (11/14/22)
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 weekly NFT newsletter. This is where you can track the most critical business, legal and litigation developments in the world of NFTs. If you like it, please share it. (And check out Creative Media, my media, entertainment & tech legal services and business advisory firm - think of us as your external General Counsel.)
I. JOIN ME TOMORROW (11/15, 9:30 am Pacific/12:30 pm Eastern) FOR MY FIRST NFT OFFICE HOURS and Q&A)
Dear readers. Yes, I know we’re in the midst of a crypto meltdown (Exhibit A, FTX … ‘nuff said). Nonetheless, ‘tis the season for NFTs, which continue to be alive and well, although ongoing Web3 angst certainly will accelerate the pace of litigation (which gives you even more reason to track matters closely).
That’s why TOMORROW, November 15th, from 9:30-10:30 am Pacific, I will host my first NFT Office Hours and Q&A. This is no webinar. It’s a regular zoom meeting where we can actually talk. I’ll first give a brief overview of the key NFT business and legal issues and landscape. Then I’ll discuss why the biggest brands in the world like Nike, Starbucks, LiveNation, and J.P. Morgan continue to go “all in” (and why the current crypto melt-down has no impact on the massive NFT market opportunity). And then we’ll talk. So bring your questions and your own insights and experiences.
All free. No registration required. Just put it in your calendars - and use this link to join (or add it to your calendar https://us02web.zoom.us/j/82759141546 ). Remember, TOMORROW 11/15 at 9:30 am Pacific. Whether 1 of you show (or 5, 10 or 20), I’ll be there for the full hour. (And feel free to request the deck I’ll use by reaching out to me at email@example.com).
II. NFT “QUICK HITS” (KEY NEW WEB3 DEVELOPMENTS)
Here are this week’s “Quick Hits” of recent major Web3 and NFT news (remember, I already mentioned FTX … just imagine the litigation coming there!).
(1) Oh Elon, now what? Twitter is flittering away. $44 billion seemingly burns before our eyes. So who can Musk turn to? His crypto bros (all 115 million of them) of course! Musk will shine his rather unfocused spotlight on crypto, payment processing, money transfers, and NFTs of course. It’s in his PayPal blood after all. And the original Twit (and on-and-off-again compadre) Jack Dorsey is all-in on payments with Stripe. And let’s not forget that Dorsey’s Stripe also owns Jay-Z’s Tidal music streaming service. Could there be some kind of Musk/Dorsey “win-win” here? Twitter just recently announced “NFT Tweet Tiles” - a new feature that will enable users to buy and sell NFTs via tweets. That certainly means musicians and superfans too. Twitter and Stripe enabling a new Tidal wave? 2 great tastes that taste great together?
(2) Speaking of Elon, President Biden - still basking in the mid-term glow - believes Musk’s links to foreign countries should be scrutinized. “I think that Elon Musk’s cooperation and/or technical relationships with other countries is worthy of being looked at.” And no matter how the mid-term votes finally settle, he’ll have plenty of support from both sides of the aisle.
(3) Zuck, you too? Read my latest weekly column from media, entertainment and tech publication TheWrap where I discuss how and why Zuckerberg’s “all in” bet on Meta has no legs (both literally and figuratively). You can find it here (I kind of like this one - so check it out; if nothing else, you may get a few chuckles out of it … and follow my weekly column posted every Tuesday morning in TheWrap. You can check them all out here).
(4) Tom Brady, you won your game yesterday, but you lost big last week. Giselle’s husband is/was a major investor in FTX. (Speaking of football, how ‘bout my Minnesota Vikings? Best game I’ve ever watched. Period. Full stop. And I’ve watched a lot of football).
(5) Finally, based on last week’s newsletter poll, most of you still believe “NFTs” will stick as a monikor, despite the negative connotation in many minds during this crypto winter. Others push for “digital tickets,” etc. Watch closely, because names matter.
III. THE WEEKLY NFT CASE TRACKER
You’ll see I’ve organized things differently this week, with ease of use and efficiency in mind. In this new section, I organize the key NFT litigation by context (infringement, securities, theft of property, criminal insider trading, international), identify all by name, and give you just the most recent case updates as of today, November 14th. Then if you want to dig deeper, you will find my full case summaries, detailed analyses, and prognostications of how they will end immediately below in Section IV. Let me know if this re-org works.
Nike v. StockX. Nike is the most successful apparel/fashion brand in the NFT world (with $200 million in NFT sales to date). Here, trademark likelihood of confusion butts up against “fair use.” The court held a status conference last week.
Yuga Labs v. Ryder Ripp. Yuga is creator of Bored Apes and CryptoPunks. This is another “infringement meets fair use” case. No major updates last week. The court still has Ripp’s motion to dismiss under consideration.
Hermes v. Mason Rothschild. High end fashion brand sued an artist for infringement for creating digital versions of its famed Birken bags. No major updates last week. But the final pre-trial conference is later this week on November 18th.
Friel v. Dapper Labs. Buyers of NBA Top Shots sued Dapper for allegedly selling unregistered securities. No major updates last week. Dapper’s motion to dismiss is pending.
Theft of Property
LCX AG v. John Does Nos. 1-25. A European cryptocurrency exchange sued unknown hackers for theft of $8 million in NFT assets. The court heard oral arguments last week on anonymous defendants’ motion to quash subpoenas to show up at trial.
Criminal Insider Trading
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. No major updates last week. The court most recently rejected Chastain’s motion to dismiss.
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).
IV. THE FULL NFT LITIGATION BRIEFING, ANALYSIS & SCORECARD
Here’s my full briefing and analysis for the major NFT cases tracked above. (Reach out to me at firstname.lastname@example.org with any tips, insights or recommendations for additional 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).
A barrage of continuing discovery and status conference before the court was held late last week. 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. And, as mentioned above, Nike plays hard and “just does it” in the NFT world (and is the most successful fashion brand playing in that world by a long-shot). 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 has 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 last week. 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 last week. But the final pre-trial conference is later this week on November 18th. Previously, both sides recently filed pending motions for summary judgment to “win” pre-trial. But trial courts typically do not like to end litigation pre-trial via summary judgment based on just the pleadings and documentary evidence. Courts prefer for cases to go to trial and hope that the parties settle pre-trial.
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. Nonetheless, 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) SECURITIES CASES
(i) Friel v. Dapper Labs
Buyers of NBA Top Shot “Moments” sued the NFT maker Dapper Labs for allegedly 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 last week. 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.” At the same time, the SEC’s new investigation of Yuga Labs (discussed immediately below) is relevant here too and will potentially lay out some more clarity about requisite disclosures in general.
(ii) Other Key Securities Developments
The SEC is now investigating Yuga Labs (mentioned above) to determine whether certain Yuga NFTs are akin to stocks that should be subject to SEC disclosure rules.
(3) 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.
The court heard oral arguments - remotely via Microsoft Teams - last week on anonymous defendants’ motion to quash subpoenas to show up at trial. Further remote oral arguments are scheduled for later this week. The most fascinating aspect of this case is that the court permitted the plaintiff Exchange to serve the 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 (that would qualify for accepting service of process).
This case 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). Interestingly, the airdropped service of court papers on the unknown defendants in this case worked. Attorneys for these unknown defendants have showed up to defend the lawsuit.
(4) CRIMINAL INSIDER TRADING
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.
In October the U.S. District Court judge (from the Southern District of New York) rejected Chastain’s various defenses in his motion to dismiss, ruling that they 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.
(5) 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 LCX case above, the court permitted relevant 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 above - 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 of service (TOS) that give platforms the ability to bar users for violations of those TOS 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.
(6) RECENTLY SETTLED/RESOLVED KEY LITIGATION
Yes, these cases have settled out of court. But their lessons should be top of mind.
(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.
V. CLOSING THOUGHTS
(i) NFT Smart Contracts Are Still Too Dumb
They typically come with terms of service and copyright licensing terms that vary significantly across different platforms. This lack of standardization means risk in a fast-evolving NFT world - yet one more critical reason to closely follow and use “best practices” (and choose your advisors wisely).
(ii) NFTs (The “Real” Ones) Are Alive and Well
Let’s be clear. Despite today’s “crypto winter” (more like a blizzard), NFTs with continuing and lasting utility, experiences and real community are here to stay - and I remain bullish. For all you doubters out there, here are two data points that matter:
(1) The overall Web3 market (including crypto and blockchain investments) has received $89 billion in total funding into 16,315 companies (according to CrunchBase). Over $16 billion of that sum was invested this year (as of September 1st). That’s money dedicated to fueling a long-term massive NFT market.
(2) “Over half” of active Internet users between the ages 25-44 in the U.S. and other key digital asset market territories have already used NFTs (according to this recent report by McKinsey based on a survey of 35,000 users). So, yes, consumers care about NFTs and are hungry for more.
(3) Check out my recent article in TheWrap - “NFTs Aren’t Dead - The Right Ones Will Transform Entertainment.” Also 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.
And 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 check out my media-tech focused legal services and business advisory firm Creative Media. Reach out to me at email@example.com to discuss your own Web3 and NFT legal and business issues (as well as media, entertainment, business and tech issues in general) - and to schedule a private consultation. In addition to hourly billing, we uniquely offer flat fee legal services to give you the most innovative and cost effective high quality legal solutions - and to give you the Web3/NFT experience and innovation you need.]
VI. ADDITIONAL RESOURCES (NFTS: WHAT THEY ARE, WHY THEY MATTER)
To learn more about NFTs, I added a new section of resources to the NFT Legal Update website (which you can access here). And reach out to me to me at firstname.lastname@example.org to discuss your own questions - and check out Creative Media, my legal services and business advisory firm.
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