Time Sensitive Deadlines for Providing the Government Information on Intellectual Property Issues and NFTs

Worried about how intellectual property rights and NFTs intersect? There are two important dates that you should mark down to express those concerns to the United States Patent and Trademark Office and the Copyright Office – Dec. 21, 2022, and Feb. 3, 2023.

The USPTO and the Copyright Office are jointly studying IP issues related to NFTs. An NFT is a unique ‘digital object’ that someone can own, sell, or buy. NFTs are non-fungible, in that each NFT is unique and has no identical counterpart. That makes them a potentially excellent vehicle for transferring rights.

There are many open questions about what, if any, IP rights are associated with a purchase of an NFT. Currently, those questions are usually resolved solely by contract. Whether the government should adopt policies relating to those contracts or industry standards is an open question. Another open question is whether the USPTO and Copyright Office need to promote changes to the law and update their procedural regulations to make registration of NFT related rights and transfers of intellectual property rights through NFTs easier.

The offices are advancing study of those questions by seeking input from industry. They are doing this in two ways: by holding public roundtables and by seeking comments.

2023 Public Roundtables

The three roundtables will be broken down by types of intellectual property: copyright, patent and trademark. If you are interested in speaking at one of the roundtables, the deadline to volunteer to speak is Dec. 21, 2022.

The three public, virtual roundtables are:

• • Trademarks: Tuesday, January 24, 2023
  • Patents: Thursday, January 26, 2023
  • Copyright: Tuesday, January 31, 2023
    
    

You can submit a request to participate by sending an email here. Your request should include your name, professional affiliation, and contact information and designate the roundtable(s) at which you wish to speak.

Public Comments

Second, the offices are seeking public comments about intellectual property and NFTs. The deadline for submitting written comments is Feb. 3, 2022.

While the offices are taking general comments, they are looking for answers to these specific questions:

1. Please describe:

• • The current uses of NFTs in your field or industry, including the types of assets associated with NFTs (e.g., digital assets, physical goods, services); and
  • Potential future applications of NFTs in your field or industry, including the types of assets that could be associated with NFTs (e.g., digital assets, physical goods, services).

2. Describe any IP-related challenges or opportunities associated with NFTs or NFT markets.

3. How NFT markets affect the production of materials subject to IP protection.

4. Describe whether, how, and to what extent NFTs are used by or could be used by IP rights holders (including those who hold trademarks, patents, and/or copyrights) to:

• • Document the authenticity of an asset;
  • Document the seller’s ownership of or authority to sell an asset;
  • Document the seller’s authority to transfer any relevant or necessary IP rights associated with an asset; and
  • Document any limitations related to IP rights surrounding the sale, or the purchaser’s use, of an asset.

5. Describe whether, how, and to what extent NFTs present challenges for IP rights holders, or those who sell assets using NFTs, with respect to the activities described in Question 4 above.

6. Describe whether, how, and to what extent NFTs are used by, could be used by, or present challenges or opportunities for IP rights holders (including those who hold trademarks, patents, and/or copyrights) to:

• • Obtain their IP rights;
  • Transfer or license their IP rights;
  • Exercise overall control and management of their IP rights (e.g., digital rights management tools, mechanisms to facilitate the payment of royalties, etc.); and
  • Enforce their IP rights, including any mechanisms that could mitigate infringement or help ensure compliance with contractual terms associated with the sale of an asset.

7.  Describe how and to what extent copyrights, trademarks, and patents are relied on, or anticipated to be relied on, in your field or industry to:

• • Protect assets that are associated with NFTs;
  • Combat infringement associated with NFT-related assets offered by third parties; and
  • Ensure the availability of appropriate reuse of NFT-related assets.

8. Are current IP laws adequate to address the protection and enforcement of IP in the context of NFTs? If not, please explain why, including any gaps in current IP laws, and describe any legislation you believe should be considered to address these issues.

9. Describe any IP-related impacts those in your field or industry have experienced in connection with actual or intended uses of NFTs. When relevant, please describe any legal disputes that have arisen in the following contexts, and the outcome of such disputes, including citations to any relevant judicial proceedings:

• • The relationship between the transfer of an NFT and the ownership of IP rights in the associated asset;
  • The licensing of IP rights in the asset associated with an NFT;
  • Infringement claims when either
    • an NFT is associated with an asset in which another party holds IP rights, or
    • IP rights in the asset associated with an NFT are owned by the NFT creator;
  • The type and/or scope of IP protection afforded to the NFT creator, including when that party is not the creator of the associated asset; and
  • The application of one or more of the exclusive rights under 17 U.S.C. 106 to transactions involving NFTs.

10. Please describe any instances you have observed in which a party has sent or received:

• • A notification of claimed copyright infringement, counternotice or material misrepresentation, pursuant to 17 U.S.C. 512, in connection with an NFT; and
  • Other IP-related legal claims seeking the removal or reinstatement of NFT-associated materials.

Ultimately, these studies may have a big impact on industry’s use of NFTs. It’s important that the results reflect not only the present reality that is necessary to support the blockchain market, but also leave room for future innovation.

If you rely on NFTs or hope to in the future, getting your perspective into this conversation is important. If you have questions about NFTs and intellectual property contact Drew Patty, Andrew Coffman or the rest of the Phelps Intellectual Property Team.