Areeb Daimee is a 2L JD candidate at the University of Western Ontario Faculty of Law.

With the rise of significant non-fungible token (“NFT”) 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’ examination.

When focusing specifically on prominent trademark infringement disputes, two significant American cases come to mind.

Nike’s suit against StockX

��������� StockX for trademark infringement in February 2022 for selling NFTs of Nike’s products on the StockX online platform. Nike argues that StockX told consumers that tokens would be redeemable for physical shoes.��������� claims that this trademark infringement by StockX is , negatively effecting Nike’s plans to release a line of virtual products.

StockX has made minimal comments on the matter but makes it clear that Nike’s “lacks merit” and is ��“a mischaracterization of the service StockX offers” through NFTs.

Hermès’ suit against artist Mason Rothschild

Hermès is in a trademark dispute with artist Mason Rothschild after Rothschild sold multiple digital handbag NFTs. Hermès 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 “ “a playful abstraction.”

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 ‘south of the border’ 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 “"there’s nothing in Canadian legislation related to NFTs because they’re generally so new” 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: “”.

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.

The post Outcomes of Prominent NFT Disputes in the U.S May Give Rise to New Interpretations of Canadian Trademark Law appeared first on IPOsgoode.

Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

Imagine a Birkin bag – an iconic, timeless piece that arguably embodies luxury. Now make it digital, cover it in fur and sell it as a non-fungible token (NFT) called “MetaBirkin” for at least (about $6900 Canadian). Does this count as an artistic expression protected under First Amendment rights of expression and speech, or is it a trademark infringement upon a beloved fashion icon? This is the issue at the core of the ongoing lawsuit.

Brief Timeline of the Lawsuit

January 14^th, 2022 – Hermès files a complaint

Catching wind of the furry MetaBirkin NFTs, Hermès filed a trademark infringement and dilution lawsuit against Mason Rothschild, the creator. In their , Hermès claims that the label “MetaBirkin” infringes upon their “BIRKIN” trademark and likely causes confusion in the minds of consumers that Rothschild’s products were “authorized, sponsored, or approved by Hermès.” Further details about this initial action can be found in our earlier article .

February 9^th, 2022 – Rothschild files motion to dismiss the action

Legal counsel for Rothschild maintained that the NFTs constituted protected expression under the test set out in , which held that the use of a famous trademark is protected from trademark infringement if 1) the name is “minimally artistically relevant” to the product and 2) that the use of the trademark does not explicitly mislead consumers as to source or content of the product.

Regarding the first prong, that the term “MetaBirkin” was minimally artistically relevant to his project of questioning the nature of luxury and value and bringing awareness to the prevalence of animal cruelty in the fashion industry. Regarding the second prong, Rothschild’s counsel pointed to the lack of explicit mention of Hermès in the advertising of the NFTs. Rothschild’s counsel further argued that the First Amendment right of speech and expression outweighs the “slight risk” of consumer confusion.

that Rothschild’s usage of “MetaBirkin” was akin to a trademark, namely to “brand a product line, and to attract public attention and signify source.” This form of use is outside the scope of First Amendment protection, making the Rogers test inapplicable.

May 18^th, 2022 – Judge Radkoff denies Rothschild’s motion to dismiss

Judge Radkoff found that the Rogers test applied because the . Judge Radkoff that “[because] NFTs are simply code pointing to where a digital image is located and authenticating the image, using NFTs to authenticate an image and allow for tradeable subsequent resale and transfer does not make the image a commodity without First Amendment protection.”

However, the motion was ultimately denied because the Hermès had filed adequate evidence (such as Rothschild’s statements in public interviews) to support the allegation that the label was artistically relevant and explicitly misleading to consumers. Rothschild appealed this decision, which was subsequently

October 8^th, 2022 – Hermès files a motion for summary judgement

In a newly filed motion, the instead of the Rogers test, which asks: 1) whether the plaintiff’s mark (“BIRKIN”) is entitled to protection and 2) whether the defendant’s use of the mark (“MetaBirkin”) is likely to cause consumer confusion. Hermès argues that Gruner is the appropriate test given the recent development of “undisputable facts” that pushes the First Amendment considerations out of the question.

The facts that Hermès points to include: the similarity between the parties’ marks, evidence of actual confusion amongst consumers, and the fact that both parties are selling the same product, albeit in different universes. Counsel for Hermès claims that a summary judgment on the action should be granted due to the clear and undisputed nature of the material facts.

The Big Picture

All eyes are on the court as they navigate this new digital terrain and attempt to balance the freedom rights of creators against the IP rights of consumer brands. As Mr. Dan Bereskin emphasized in his , an IP owner’s rights should not go unchecked for fear of imposing a “chilling effect” on artists’ creative freedoms. On the other hand, the metaverse presents a new avenue for trademark infringement that is difficult to police, given the ever-evolving digital landscape. Hopefully, the continuing battle between Hermès and Rothschild will provide some guidance about the legal relationship between brands and creators in this new digital world.

The post Trademark Law Moves Online: “MetaBirkin” Updates appeared first on IPOsgoode.

Michelle Mao is an IPilogue Writer and an incoming 2L JD candidate at Osgoode Hall Law School.

Imagine you are a new artist, who sells your art for $500 dollars, which is enough to cover the cost of supplies and your time spent on the piece. Then you find out ten years later that your original piece was resold for over $50,000 dollars while you are destitute. This situation is why artists around the world advocate for .

An Artist Resale Right (ARR) allows the artist or the artist’s estate to profit or financially benefit from the sale of the artist’s work in secondary markets after the original sale. Artists and advocates consider this right as a part of the wage artists should receive for their profession and livelihood. As of May 2022, Canada does not have a policy towards ARR in place.

Supporters have several arguments in favour of implementing ARR in Canada. First, artists as a group are more vulnerable to financial instability or more likely to take on additional jobs to achieve financial stability. ARR can provide a that can help artists improve their financial stability. Second, other artistic professionals, such as and writers, already have systems in place to continuously profit from the downstream payments made in relation to their original work.

Those opposing resale rights raise concerns regarding the possible on art sellers, and art resellers may not feel properly compensated for the risk they incur when collecting pieces for galleries and resale. regarding compliance with proper payment and the lack of global ARR standardization can complicate many logistics.

While the law of ARR is no longer a novel idea in the legal world, the importance of protections for an artist’s fair share of profits is ever-increasing as Non-Fungible Tokens (NFTs) become mainstream. Currently, the specific wording creates for NFT transactions to forego payment to the original artist. This is because NFTs are a “one-time copy” of original art, and thus resale of the NFT does not activate ARR entitlements, which only apply to the original work.

Overall, profits made from the sale (and resale) of art must be balanced between artists, art professionals, art curators, auction houses, etc. sWith the value of artworks having the potential to increase so exponentially over time, it may be proportional for artists to make a percentage of resale revenue. The secondary income would acknowledge the artist’s mastery and skill, while properly compensating them for the value of the art that they created. Now, as NFTs become increasingly tied to , future artist compensation is increasingly important. Future ARR advocacy should consider how ARR can and should be adapted to not only address logistical complexities but also NFT loopholes.

The post Should Artists Make Money Off Future Sales of their Work? An Argument For and Against appeared first on IPOsgoode.

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Jasmine Yu is an IPilogue Writer and a 1L JD Candidate at the University of Toronto.

The Hermès Birkin is undoubtedly among the most iconic bags in history. Most of us can recall Samantha from Sex and the City being told: “it’s not a Bag, it’s a Birkin.” The Birkin has become the ultimate status symbol: its limited production makes it incredibly . The bag is immediately recognizable due to its timeless silhouette, features in TV shows and movies, and popularity with .��

The Birkin’s distinctive shape has acquired a secondary meaning, such that its trade dress has a with the US Patent & Trademark Office. The Birkin’s hefty price tag — a Diamond Himalaya Birkin for over $400,000 in 2017 — has made it a . Hermès is embroiled in constant defending the Birkin against trademark infringement and passing-off.

Recently, Hermès has tested out the scope of their intellectual property rights in the metaverse. On January 14, 2022, Hermès a trademark infringement and dilution lawsuit against Mason Rothschild, the designer of MetaBirkin Non-Fungible Tokens (NFTs), a collection of 100 fur-covered Birkin-shaped bags, which launched in December 2021 on the NFT exchange platform .��

Hermès’ Action

Hermès claims that beginning on December 2, 2021, Rothschild’s advertising of his MetaBirkin NFTs infringed Hermès’ “globally recognized” “BIRKIN” trademark and Birkin bag trade dress. They claim that Rothschild’s usage of their marks was likely to cause confusion in the minds of the purchasing public and create a false impression that Rothchild’s NFTs were authorized, sponsored, or approved by Hermès.��

Hermès claims trademark infringement, false designation of origin, and trademark dilution. They seek monetary damages, an injunction to bar the further use of Hermès’ marks, a transfer of Rothschild’s metabirkins.com domain, and delivery of all unauthorized products and advertisements.��

On December 16th, 2021, Hermès sent a cease-and-desist letter to both OpenSea and Rothschild, notifying them of the “blatant violation of intellectual property.” While OpenSea, the NFT exchange platform, removed the NFTs, Rothschild still advertises and offers his NFTs. However, Rothschild has since added disclaimers on his website, stating “We are not affiliated, associated, authorized, endorsed by, or connected with HERMÈS,” and provides a link to the official HERMÈS . Hermès notes the absence of these disclaimers from all other channels that sell MetaBirkins, creating confusion among consumers.��

Trademark Protection in the Metaverse��

Rothschild addressed the cease-and-desist letter in an Instagram , claiming that in creating��MetaBirkin NFTs, he “re-interpreted the form, materiality, and name of a known cultural touchpoint” and that selling his MetaBirkin NFTs was “akin to selling them as physical art prints.”

Hermès, however, states that MetaBirkin NFTs’ success undoubtedly arises from the “confusing and dilutive use” of their trademark. MetaBirkin NFTs were even described as a “tribute to Hermès’ most famous handbag, the Birkin,” in its initial offering on OpenSea. Citing one commentator, Hermès claimed that but for the NFT being called a Birkin, Rothschild’s NFTs would not get any attention.

Is this Fair Use?

Several barriers may preclude Rothschild from successfully claiming fair use. His extensive use of Hermès’s trademarks — i.e., the name “MetaBirkin,” the metabirkins.com domain, the hashtags #MetaBirkins and #NotYourMothersBirkin — is likely commercial in nature, which conflicts with fair use claims.

Fair use also does not provide protection when the alleged infringer used the mark as a trademark of their own, which Rothschild has done by repeatedly complaining of ‘counterfeited’ or ‘fake’ MetaBirkins on NFT exchange platforms.��

In support of Hermès’ contention of commercial use, the 100 MetaBirkin NFTs for $42,000 initially, and have garnered re-sales of $1.2 million, of which, Rothschild is entitled to 7.5%. Rothschild has already earned over $120,000.��

Future of Fashion in the Metaverse

While trademark law has well been established for luxury fashion, the metaverse complicates existing law. This legal battle has raised the novel issue of whether Hermès’ trademarks extend to digital content. Other big-name brands are testing the waters of the metaverse, such as .

The post It’s Not a Bag, it’s a MetaBirkin! appeared first on IPOsgoode.

Photo by Engin Akyurt ()

Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge ��as an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.��

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.��

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro Santé Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .��

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s ���ABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.��

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91��ɫ achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

The post 2021 IP Year in Review appeared first on IPOsgoode.

On November 16, 2021, Miramax filed a����against Quentin Tarantino for his planned auction of non-fungible tokens (NFTs) based on his original hand-written script of the film��Pulp Fiction. ��In the lawsuit, Miramax alleges several causes of action, including breach of contract, copyright infringement, and trademark infringement.

In early November, Tarantino announced that he would auction off NFTs containing scenes from a handwritten screenplay of the film and personalized audio commentary from Tarantino. The sale is said to be for a new type of “secret NFTs” with programmable privacy features that allow the owner to withhold certain content from being publicly available. Thus, the purchaser will have the choice to share the NFT’s associated content or keep it to themselves.

In its complaint, Miramax alleges that Tarantino breached his contract with the company because he does not have the right to develop or sell NFTs related to the film. According to the complaint, Miramax was granted extensive rights in the parties’ contractual agreements for the film, and only a limited set of rights were reserved for Tarantino. Miramax argues that these reserved rights are far too narrow to allow Tarantino to unilaterally produce, market, and sell the NFTs.

Miramax also alleges that the NFT auction infringes its intellectual property rights in the film. The company claims that, except for Tarantino’s limited set of reserved rights, it is the exclusive owner of all copyright to the film, including the finished production and all elements in its stages of development. Consequently, Tarantino allegedly infringed Miramax’s copyright with the NFT auction and any preparation and reproduction of works based on the film during the auction’s marketing campaign. Miramax’s complaint also includes a claim for trademark infringement based on its unregistered and registered trademark rights in the name PULP FICTION. It alleges that the sale of the Pulp Fiction NFTs will cause confusion, mistake, and deception among consumers as to whether the NFTs originate from, are associated or affiliated with, or are otherwise authorized by Miramax.

Despite largely being a contractual dispute, the inclusion of NFTs in this lawsuit may allow for exploration of new ground in the technology space. There are many questions surrounding the minting of NFTs in existing films and the contracts for these projects do not offer a clear solution. This makes not only the movie��Pulp Fiction, but also its associated lawsuit, one to watch.

The post Miramax Files Lawsuit Against Quentin Tarantino For Sale Of Pulp Fiction NFTs appeared first on IPOsgoode.

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Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen’s University Faculty of Law

In May 2021, a phenomenal by Keir Strickland-Murphy (Osgoode Law ‘22) touched on the recent boom of Non- fungible Tokens. In this piece, I will recapitulate Strickland- Murphy’s exploration of IP ownership of Non-fungible Tokens and expand on recent developments since May.

What are non-fungible tokens?

Non-Fungible tokens (“NFTs”) are unique digital assets that as a certificate of authenticity for an object, be it physical or virtual. Blockchain acts as a ledger to secure these assets. Blockchains are often relied upon for their security, so much so that certain universities have begun through them. As described in their name, NFTs have unique properties and are not interchangeable. As such, any digital asset can be tokenized through the “minting process”, much like a refrigerator, car, or computer is given a serial number. Unique identification is a valuable tool for the many and auction houses that have started using the blockchain to sell or . The sale of an NFT also includes a smart contract.

Strickland-Murphy noted that and were early adopters of the NFT craze. Since then, public fascination has only grown since then, with celebrities like Jimmy Fallon and Emily Ratajkowski jumping on board. In May 2021, Emily Ratajkowski sold an NFT called “. The NFT came in the form of a digital-only photograph featuring the model. Ratajkowski explained the impetus for its creation in her essay “Buying Myself Back”, where she shares that the photo she shared on Instagram had been hanging in the Gagosian as part of Richard Prince’s “New Portraits” art show. Prince had been putting other people’s photos from Instagram on canvas and re-selling them for $90,000. Given this situation, Ratajkowski’s NFT auction was, as Ratajkowski explains it, an opportunity to reclaim ownership over her photo.

Recent celebrity obsession with the Bored Ape NFTs has further fueled the NFT buzz. A bundle of 101 Bored Ape Yacht Club NFTs recently . The funky cartoon images have caught the attention of . The interest in Bored Ape is almost palpable as the release of the Yacht Club NFTs can be connected to nearly a in the sale of the NFT Ethereum.

If an image is attached to an NFT, does that mean I own the copyright for that image?

Where an NFT buyer has purchased an image, they do not necessarily receive the copyright associated with that image. If we refer to the computer serial number example, just because you own one version of a computer does not mean you own the patent for the underlying software in the computer. In this case, the software would still belong to the software engineers that invented it. Similarly, if you purchase a painting, you do not assume the copyright over that painting once you have purchased it.

In Canada, an is necessary to transfer copyright from an artist to a purchaser. Therefore, the purchaser of an NFT will only receive the underlying copyright when the smart contract accompanying the NFT expresses this. Of course, unless waived by the artist, the moral rights associated with the artistic work remain with the artist. ensure the integrity of the work, and, when reasonable, the artist’s right to association with their work by name or pseudonym.

What about copyright infringement?

The images associated with NFTs have caused some confusion. An NFT seller must hold a copyright in the image associated with the NFT they are selling. To “mint” an image as an NFT, it is crucial that a seller holds the copyright or a license. However, as long as the seller is the copyright holder, several NFTs can be associated with the same image. In short, NFT sellers can sell as many NFT’s associated with a particular image as they wish, so long as they hold the copyright to that image. If they do not own the copyright to an image, they cannot tokenize it into an NFT and lawfully sell it.

Although NFT’s are a relatively recent addition to the investment scene, numerous lawsuits involving their associated copyrights have already emerged. Rapper Jay-Z Damon Dash, co-founder and shareholder of his record label RAF Inc., for attempting to mint one of his music albums, Reasonable Doubt, as an NFT. The court held that Dash does not own a copyright to the album simply by being a minority shareholder in the record label that owns it. As such, he cannot, in the court’s words,.

Quentin Tarantino is at an impasse with his efforts to profit off the booming NFT industry. Tarantino is embroiled in a legal dispute with the film production company Miramax after announcing that he would be auctioning off excerpts of his original Pulp Fiction screenplay, which he touts include “secrets” about his creative process. that Tarantino does not own the rights to the screenplay and, therefore, selling these secrets through an NFT would constitute copyright infringement.

Old Laws Protect New Trends

Despite the law’s reputation as conservative and , in the case of NFTs, old copyright laws have proven to be tremendously practical. Although the world of blockchain is exciting, it is at this junction that potential NFT sellers should take a moment of pause amongst the excitement to contemplate the legal implications of selling NFTs with legally protected works. When infringing a copyrightable work through the minting process, one must balance the cost of copyright infringement versus the value of the NFT itself.

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Claire Wortsman is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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While certain sectors of the entertainment industry, especially those involving live events, were hit hard by COVID-19, podcasting has amidst the pandemic. As lockdown measures increased and walks around the block became the most exciting part of my day, I too hopped on the podcast bandwagon. Here are my top ten IP-related podcast picks (in alphabetical order):��

��

The IP law blog, published by and hosted by intellectual property attorneys Scott Hervey and Josh Escovedo, delves into IP issues in the news. I loved this episode on celebrities being sued for posting images of themselves because it does an excellent job of exploring the IP law basis for this phenomenon.

Brand & New is a podcast by the . In this episode, host Audrey Dauvet talks to Harvard Law School’s Rebecca Tushnet about the impact of social and racial justice movements on owners of offensive trademarks. In particular, I enjoyed their conversation about the possibility of minority-owned brands reclaiming and trademarking offensive words or stereotypes.

This podcast series will definitely appeal to a more niche audience. It is hosted by Cesie and Angela, two practicing attorneys and reality television fans. They examine and discuss the lawsuits and legal disputes of reality television personalities. Although I do not follow The Real Housewives, I still found this episode incredibly entertaining and informative.��

For anybody interested in both IP law and the cannabis industry, host Jenn Procacci and patent attorney and plant scientist Dr. Dale Hunt delve into IP protection for cannabis breeders.��

This super fun podcast series, hosted by intellectual property attorneys Michael Snyder and Joseph Gushue, explores elements of intellectual property law referenced in popular movies, television, and songs. My favourite episode is Jurassic Patents, where Volpe Koenig attorney and Ph.D. Douglas Bucklin joins the hosts to discuss the Jurassic Park movies: how realistic they are, how IP law treats DNA, and how close we are to bringing back dinosaurs.

In this episode, Dario de Martino, Joyce Liou, and Paul Goldstein of break down all things non-fungible tokens (NFTs) and IP. Despite its short runtime, this episode touches on many interesting ways IP law can apply to the NFT space and is especially important as the NFT market continues to grow.

Innovation Talks is an IP podcast created by for small and mid-size enterprises. In this episode, Rebecca Dobson and Steve Waine provide interesting advice, stories, and hypotheticals involving the intersection of IP rights and social media.��

Since designed the Progress Pride Flag in 2018, its use appears to be steadily increasing. This past pride month, I saw it everywhere. This episode offers a fascinating glimpse into Quasar’s process of designing the flag and the aftermath of their overnight success. Quasar also discusses their choices regarding exercising control over their IP.

This episode of Intellectual Property Law Podcast Series features attorneys Isi Caulder and Laurence MacPhie. They discuss the role of AI in healthcare, and specifically in the fight against COVID-19. They examine how IP law applies to AI in healthcare and the ways in which it can both hinder and facilitate progress.

tells her moving story of being a small business owner approached by a larger brand hoping to profit off of her IP. This David and Goliath story is a must-listen in my book and features an important intersectional and historical perspective on IP.

The post Ad-hear to the Law: My Top Ten IP-Related Podcast Episodes appeared first on IPOsgoode.

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Claire Wortsman is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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In music copyright news, producer and DJ iMarkkeyz informed that his management is in talks with Cardi B’s in the wake of the success of his song, . The song features audio taken from one of Cardi B’s Instagram posts. Personally, when it comes to pandemic-inspired music, I am partial to Lawrence’s and Fred again… and The Blessed Madonna’s . While the former romanticizes the quarantine period of living in sweatpants, microwaving Pad Thai, and playing board games, the latter reminds lovers of concerts, music festivals, and dancing in general of what they have lost and will hopefully regain in the not-so-distant future. Many live music listeners are feeling the same way as Lacey Novinka, who revealed to the that she misses, “being with all these people, jumping up and down yelling, getting sweaty.”��

What Have Musicians Lost? ��

While concert-goers have temporarily lost an experience that brings them joy, a recent detailing a brilliant jazz pianist’s departure from the music industry has brought to the forefront of my mind the losses suffered for those on stage. Ron Davis had spent over five decades in music and released 13 albums, but due to COVID-19, he lost the ability to play gigs and had to turn to his fallback career: law. Fortunately for Davis, his fallback plan doesn’t sound so bad. As he works on interesting cases and earns a steady pay cheque, he seems at peace with his shift away from the stage and towards the courtroom.

Unfortunately, not many musicians have fallbacks that offer the same level of fulfillment and financial security. Singer-songwriter Chris Luedecke took up work harvesting scallops, a job he as invigorating but not something he could see himself doing long-term as his desire to play again grows. Fiddler Ashley MacIsaac told that after gigs, which make up 95% of his gross income, were cancelled, he had to resort to selling the rights to his catalogue of recordings as well as two of his three best violins.

Many musicians need to tour and sell merchandise to earn a liveable wage. Royalties from digital streaming services, which the reports average half a cent per listen, are often not enough on their own. Kevin Erickson, the director of artist-advocacy non-profit group Future of Music, wants more than a return to the pre-virus status quo. He that the pandemic be viewed as “an opportunity to reflect on the precariousness that so many creative workers face, and to take bold action to remedy that problem.” ��

In conversation with Andrew Oliver, who fans may know as or as lead guitarist and bassist of , I learned that the entire music ecosystem feels the pandemic’s impact – from musicians to venue owners to promoters to sound and lighting-technicians. Oliver recounted the loss of many small and medium sized venues that “either closed down or were bought up by larger corporations. Many owners operate their venues as a labour of love, and it is terrible to see them be forced to sell their prized spaces.”

Oliver describes the last couple years as devastating for the industry and personally challenging as his band’s first European tour was cancelled. However, Oliver also left me with some hope for the future: “Many musicians, including my band mates… cycle between two modes: writing/recording and touring. When our tours got cancelled, we decided to take the opportunity to record as much music as we could… One big silver lining of the pandemic is the massive amount of music that is waiting to be released around the world.”

The Changing Copyright Landscape

After losing the ability to tour, musicians found creative ways to earn money and deliver music to and engage with their fans, including and , to name a couple. Oliver also mentioned TikTok, Discord, Twitch, Instagram live chats, and interactive YouTube premiers. Each of these platforms, and their associated copyright landscapes, present unique challenges and opportunities for both creators and users.

As the pandemic has pushed life online, live-event producers have moved into the digital sphere and must adapt to its more complicated and potentially more expensive IP licensing process. Writing for the , law professor Edward Klaris warns that as more businesses enter the rights clearance game, people may look for shortcuts. Like Erickson, however, Klaris also views the pandemic as an opportunity. For him, it is an opportunity “to avoid the chaos of the past, [and to urge] organizations across the board – whether individual performers, arts platforms, small businesses or major corporations – to start thinking and behaving like the multimedia companies they have abruptly become.”

The post A Challenge, An Opportunity: The Music Industry and COVID appeared first on IPOsgoode.

Claire Wortsman is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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Held on May 27, 2021 as part of Gowling WLG’s 2021 Blockchain Webinar Series, explored all things non-fungible tokens (NFTs). Speakers included well-known entertainment lawyer Susan Abramovitch, entrepreneurship and technology commercialization expert Thomas Hunter, leader of the Toronto Gowling WLG advertising and regulatory group Daniel Cole, and founder and CEO of Vinay Gupta. Gowling WLG partner Michael Garellek moderated the panel.�� ����

Physical Assets as NFTs

Gupta gave participants a glimpse of , the world’s first and largest NFT marketplace. The front page was populated with ‘traditional’ NFTs: digital art objects, from paintings to sculptures to cartoons. But Mattereum specializes in another kind of NFT: physical assets. Gupta showed participants listings like a and a .

Listings of this nature are an exciting advancement in the NFT space, and not only for die-hard Star Trek fans and gold collectors. With companies like Mattereum using NFTs to eliminate risks associated with purchasing physical assets online, such as false condition reporting, the possibilities are endless. While NFTs were not designed for the sale of physical assets, vault reports, warranties, and the work of lawyers can build up additional layers of protection and open up the NFT market to a variety of assets by providing a guarantee that the information listed is accurate and building contracts that protect buyers’ and sellers’ rights. For example, since the buyer, seller, website host, and physical asset may be in different locations, an arbitration clause in the contract of sale prevents uncertainty about which laws apply to the sale/use of the NFT and in which venue any dispute would be resolved. In the future, NFTs may even be used to buy and sell real estate.

Digital Assets as NFTs

Abramovitch explained the importance for artists, and agents or marketplaces that sell work on artists’ behalf, to be aware of the IP rights involved in the sale of a digital asset. These rights vary more than those attached to the sale of physical assets. For example, musicians typically wish to retain copyright in their master recordings and musical compositions. But by entering into an agreement with an agency or marketplace to sell their music as an NFT, they grant the right to sell a copy of their master recording or musical composition minted (NFT lingo for created) as an NFT. While the agency or marketplace selling the NFT may allow an artist to retain their copyright, they will likely try to limit the rights an artist retains in order to guarantee the scarcity, and therefore the value, of the NFT.

NFTs and the Law

Hunter provided advice for individuals inspired to start an entrepreneurial venture using NFTs. First, it is essential from a legal and regulatory perspective to define the commercial purpose of the NFTs for sale. Second, individuals must determine who holds the rights over the product in order to mint and sell it as an NFT. Abramovitch touched on this as well, explaining the importance for artists, agents, and marketplaces to understand who is legally authorized to mint and sell something as an NFT, or to transfer this right.

Abramovitch went on to explain that although an artist may own the copyright in a work, they may have granted exclusive licenses. If a recording artist performs a cover song, they cannot give an agent or marketplace the right to mint and sell that recording without the consent of the musical composition’s owner. Similarly, a photographer may own the copyright in their work, but they may infringe the subject’s personality rights by selling the photograph as an NFT without the subject’s permission.

If an existing brand wants to use NFTs in contests or promotions, Cole explained that in addition to copyright, patent, and trademark laws, brands must be aware of advertising, marketing, and contest laws that still apply. He notes that this is an area where the law needs further development to keep pace with technology. For example, section 206(1)(f) of the prohibits contests with purchase requirements where the prize is any goods, wares, or merchandise. Is an NFT a good, ware, or merchandise? This is one of the many legal questions about NFTs that remain unresolved.����

For more information on any of the above topics, and many more ranging from the environmental footprint of NFTs/cryptocurrencies to whether an NFT could be used as collateral for a loan, I highly recommend checking out the .

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