Areeb Daimee is a 2L JD candidate at the University of Western Ontario Faculty of Law.
With the rise of significant non-fungible token (鈥淣FT鈥) trademark disputes taking place in the United States, Canada is looking towards the outcomes of those cases in order to interpret Canadian trademark law in relation to NFTs. These disputes are a recent and growing issue in intellectual property law that requires Canadian courts鈥 examination.
When focusing specifically on prominent trademark infringement disputes, two significant American cases come to mind.
Nike鈥檚 suit against StockX
听狈颈办别 StockX for trademark infringement in February 2022 for selling NFTs of Nike鈥檚 products on the StockX online platform. Nike argues that StockX told consumers that tokens would be redeemable for physical shoes.听狈颈办别 claims that this trademark infringement by StockX is , negatively effecting Nike鈥檚 plans to release a line of virtual products.
StockX has made minimal comments on the matter but makes it clear that Nike鈥檚 鈥渓acks merit鈥 and is 聽鈥渁 mischaracterization of the service StockX offers鈥 through NFTs.
贬别谤尘猫蝉鈥 suit against artist Mason Rothschild
贬别谤尘猫蝉 is in a trademark dispute with artist Mason Rothschild after Rothschild sold multiple digital handbag NFTs. 贬别谤尘猫蝉 has for trademark infringement, trademark dilution and false designations of origins and representations amongst other claims against Mason Rothschild.
In response, Rothschild has that he has protection under the First Amendment, describing the NFTs as just 鈥 鈥渁 playful abstraction.鈥
The Future of Canadian Trademark Law
Both cases are still ongoing and Canadian courts and IP lawyers are waiting for the outcomes of various NFT disputes from 鈥榮outh of the border鈥 to better understand how to apply trademark law to NFT disputes in Canada.
George Kondor, partner at Oyen Wiggs Green & Mutala LLP, explains how significant the outcomes of these cases are for the future of Canadian trademark law.
Kondor that 鈥"there鈥檚 nothing in Canadian legislation related to NFTs because they鈥檙e generally so new鈥 and that court cases are the best way to crystallize what rights people have with regards to NFT issues. Canadian courts may need to wait for a concrete answer from their U.S counterparts. Kondor did also make clear that nothing is for certain: 鈥溾.
What the Future May Hold
The multitude of NFT disputes taking place in U.S Federal Courts will likely influence Canadian courts to follow suit and apply similar interpretations of trademark law. The U.S courts will establish influential decisions which assist Canadian courts in swimming through uncharted waters. Only time will tell what direction the U.S and Canadian courts take in dealing with these unique disputes.