Juventus has obtained an important ruling on the use of trademarks reproduced in digital figurines placed on the market as non-fungible tokens (NFTs) by an unauthorized company. The court in Rome has inhibited the production, marketing, promotion, and offer for sale, directly or indirectly, in any way and form, of NFTs and digital content containing the trademarks JUVE and JUVENTUS and the figurative mark consisting of the black and white vertical striped jersey with two stars on the chest (order of 07/20/2022). In the thimble image marketed, the jersey was worn by a former soccer player who had previously played for the soccer team. But while the former footballer had sold the rights to exploit his image to the company later convicted, the same had not happened to Juventus, who pleaded ignorance of the matter.
The infringement contested by Juventus took on an even more significant connotation since the football club maintains an intense merchandising activity in various sectors such as clothing, accessories, and games both on the web and through outlets in different cities in Italy with the use of its registered trademarks. Therefore, the use for commercial purposes of its trademarks reproduced on the unauthorized digital figurines, immediately traceable to the team, could generate confusion in public, so induced to identify a link between the digital figurines and their origin from Juventus itself or companies economically linked to it. The judges found a violation of copyright law. In fact, in the trademark registration made by the soccer club, it had been expressly stated that the registration also covered products on downloadable electronic publications.
Given the circumstance then that the NFTs were marketed by the condemned company not only directly but also through the subsequent resales made by buyers in the secondary market. The court also imposed that the NFTs and the digital content associated with them or generally produced be withdrawn from the market and removed from every website and internet page directly and indirectly controlled by the same company. This was because the company was receiving a royalty fee on these additional transactions, in accordance with the typical pattern of transactions involving NFTs. A penalty was accompanying the injunctions for the delay in executing the injunctions or violation thereof, of 500 euros per day of delay or per violation.
The issue of NFTs and associated digital content marketed without the owner’s authorization is one of the significant risks associated with purchasing NFTs. This phenomenon affects many digitally native or digitally converted collectibles on the market.
In the art sector, there have already been some cases of NFTs withdrawn from sale after denial of marketing by the artist or related archive. One of the earliest and most notorious such cases involved the drawing “Free comb with pagoda” by Jean Michel Basquiat whose NFT in late April 2021 was withdrawn from the market once the archive disputed that no license or right had been transferred to the collector who had put it up for sale.
