While all those in the IP law world were busy following the developments of the two most famous international cases on the interference between trademark rights and NFTs (the one pending between the French maison Hermès and the American artist Mason Rothschild and the one between Nike and the second-hand goods retailer StockX), on last July 20th, the specialised Industrial Property Section of the Court of Rome issued the first decision, not only in Italy, but at European level on NFTs. A decision that will surely become a benchmark in this matter.
It was a first degree preliminary injunction order (not appealed) issued at the end of a preliminary injunction proceedings promoted by the Italian football club F.C. Juventus S.p.A. against Blockeras S.r.l., a company producing Non-Fungible Tokens (NFT) associated with digital cards. In particular, the NFT incriminated concerned the representation of the famous former Juventus footballer Christian Vieri, portrayed while wearing the shirt of the Turin football club on which the applicant's trademarks were clearly visible.
Accepting Juventus’ requests, the Court of Rome issued a preliminary order which substantially prevented Blockeras S.r.l. from continuing the production, commercialization, promotion and offer for sale in any way of the NFT and digital content challenged by the plaintiff. This decision, besides being rendered by an Italian Judge, is objectively an important novelty as it establishes some important legal principles also in the field of NFTs. First of all, it should be noted that the Roman Court decided to keep the NFTs distinct from the other digital contents contested by Juventus. In fact, the Court of Rome has legally defined NFTs as "unique digital certificates, registered in a blockchain, used as a means to register the ownership of an object, such as a digital work of art or a collector's item", thus adopting the definition already contained in the EUIPO Draft Guideline 2023 edition (see https://euipo.europa.eu/ohimportal/nl/draft-guidelines-2023).
Another interesting point is that the Court has given decisive importance to the acknowledged reputation of Juventus' trademarks, thus not attributing importance to the fact that Juventus had or had not registered its distinctive signs also in relation to digital objects certified (or not) by NFT. From this point of view, it is in fact important to note that the judge evaluated as sufficient that the trademarks of the "old lady" of Italian football were registered in class 9 of the Nice Classification for "goods also relating to downloadable electronic publications", thus espousing the current majority interpretation which considers this class the one that should be used in particular for the registration of trademarks intended to distinguish this particular type of digital goods (the NFT).
The decision is also interesting in terms of interference with copyright since it held that the principle contained in Article 97 of Italian Copyright Law, on the permitted uses of image rights, cannot be extended to the use of trademarks possibly and incidentally present in the image. In fact, the Court of Rome judged irrelevant the circumstance that Christian Vieri, in this particular case, had granted authorisation to use his image by creating digital cards that reproduced him wearing inter alia the jersey of the Turin club.
According to the Roman Court, such authorisation in fact does not exclude the obligation to request authorisation to use Juventus' registered trademarks. And this on the basis that such goods are intended for commercial use in relation to which the well-known reputation of the Turin team contributes to give greater value to the digital image sold by Blockeras S.r.l..
Lastly, it is also interesting to make some considerations regarding the possible practical problems of enforcement connected to the perimeter of the injunction granted by the Court of Rome: the respondent Blockeras S.r.l. was in fact also ordered to withdraw from the market and remove from each website and/or from each page of website directly and/or indirectly controlled by the same, on which such products are offered for sale and/or advertised, both the NFT and the digital content associated with them subject to the same injunction.
With regard to NFTs already sold and contained in the wallets of third parties, a practical problem of compliance with the injunction could therefore arise for the respondent, since these digital assets are out of its availability. In this respect, the substantial difference between NFTs and tangible assets (which are also potentially resaleable by first purchasers) is that, by the very nature of NFTs and the blockchain, NFTs are typically intended also for resale in the secondary market of cards (an aspect, moreover, expressly emphasised by the Court in assessing the existence of periculum in mora, the urgency requirement under Italian law).