Juventus wins NFT lawsuit against Blockeras

by James · December 7, 2022

Wednesday 7 December 2022

Juventus FC (affectionately nicknamed the “Old Lady”) has won a notable ruling in its trademark infringement case brought against the non-fungible token (“NFT“) producer Blockeras srl (“Blocking“). The Rome Court of First Instance ruled on 20 July 2022 that the unauthorized minting, advertising and sale of NFTs¹ may infringe the trademark rights of the respective owner.

Juventus FC sought a preliminary injunction from the court to prevent Blockeras from selling NFTs that used Juventus’ trademarks. The marks included the word marks “Juventus” and “Juve” as well as the design of the football club’s famous black and white jersey.² Juventus sued the Blockeras, accusing them of infringing the club’s registered marks in relation to the Blockeras’ NFTs which were linked to trading cards with former Juventus striker Christian “Bobo” Vieri.

The case is a significant judgment in relation to trademark rights and NFTs. It is the first known judgment from a European court to hold that NFTs that reproduce a third party’s trademarks without the rights holder’s permission constitute trademark infringement and may warrant an injunction.

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Juventus opposition

Blockeras is an Italian company, founded in 2018, specializing in blockchain technology. In 2021, Blockeras produced, minted and sold 68 NFT trading cards featuring Christian Vieri. To produce the NFTs, Blockeras obtained the consent of Vieri and entered into a commercial agreement with him, but it failed to obtain the consent of Juventus. Given that the Blockeras trading cards prominently featured the black and white Juventus kit and referred to the team’s name, Juventus filed a claim for a preliminary injunction against Blockeras to cease the production, marketing and sale of the Vieri NFTs.

The court in Rome noted that the trademarks relied on by Juventus are well-known brands and the club is one of the most famous across Europe, having won several Italian league titles and Champions League titles, and will therefore be recognized by consumers. The court also noted that Juventus is involved in various sales activities (accessories, games and clothing) that are sold offline and online throughout Italy and Europe, proving clear use of the marks. Regarding the likelihood of confusion, the court found that Blockeras’ use of the Juventus marks in the Vieri NFTs is likely to cause consumers to be confused as to the commercial origin of the NFTs and to falsely associate them with Juventus FC.

Blockeras’ primary counterargument was that the injunction should not be granted because the trademarks in question were not registered for use on “downloadable virtual goods”. The court rejected this argument on the grounds that:

(i) the club’s marks are widely recognized, given “the club is the most successful in Italian football”, regardless of designation, so there is no need to consider their use on digital objects; and

(ii) even if the Blockeras’ counterargument held, Juventus maintains registrations for its marks in Class 9 of the Nice Classification of Goods and Services for use in connection with “digital downloadable publications”, which the court determined would be sufficient for use as NFTs .

The court also highlighted that Juventus has an agreement with global fantasy football gaming platform Sorare³ and has therefore already proven that it is active in:

“online games that are based on blockchain technologies and on the use of cryptocurrencies and/or NFTs”.

The court further noted that Juventus’ extensive merchandising activities extended to the club’s presence on the main social networks, showing that Juventus used its brands in the digital world.

Implications of the ruling

Although the Court’s interpretation of Juventus’ digital market presence is quite extensive, it follows the broader European approach that class 9 registrations for well-known trademarks are not usually necessary to obtain protection against infringing NFTs. Furthermore, while a number of brands are quickly trying to register their marks with registrations that would signify protection in digital classes, the judgment of the Rome court emphasizes that this approach is not entirely necessary. Often, brands will be able to rely on trademark registrations they already use extensively in the non-digital space to protect their brand from infringing NFTs.

The order Juventus was given was also far-reaching. Blockeras were prohibited from participating in the further production, marketing or sale of the NFTs as well as the digital content associated with the NFTs. Digital images are often associated with NFTs and used as part of the marketing for their sale, the Rome court ruling prohibited the use of these images and gave Juventus a wide margin of protection.

Important takeaways

The landmark ruling is important for brands and likely marks a growing trend for European courts as they will increasingly face more precedential decisions in relation to trademark infringement arising from NFTs and other products produced from blockchain technologies. Some key learning points for brands include the following:

Legal advice should be sought prior to the production of NFTs, particularly where they are designed with a particular athlete, sport, club, brand or celebrity in mind. This means that sufficient checks can be carried out to establish relevant past common use. The Blockeras were unable to obtain a sufficient license to use the previous trademark rights held by Juventus, and this meant that they could no longer sell the Vieri NFTs (despite having Vieri’s consent).
Brands should be aware that existing trademark protection in the non-digital space may be sufficient to provide protection in the digital space provided the brand can show sufficient examples of actual use of the marks.
Courts are only going to face more NFT trademark infringement cases in the future, and brands should be aware of potential infringements, especially with the understanding that courts are beginning to more readily grant clear protections to brands where NFTs infringe on a brand.

FOOTNOTES

¹ NFTs are digital tokens produced via blockchain technology. They can be bought and sold using cryptocurrency and represent certificates of ownership for virtual or physical assets, the value of an NFT lies in its unique design.

² https://euipo.europa.eu/eSearch/#details/owners/177144