INTA: NFTs should be protected as ‘goods’ in Bored Ape case
Association filed amicus brief to Ninth Circuit in support of plaintiff Yuga Labs | Lanham Act does not limit definition of goods and services, INTA said.
Non-fungible tokens (NFTs) should be considered as ‘goods’ under the Lanham Act, according to the International Trademark Association (INTA), which said that this approach would uphold trademark protection across digital platforms in line with consumers’ and brand owners’ expectations.
INTA submitted its view in an amicus brief filed with the US Court of Appeals for the Ninth Circuit yesterday, with regard to Yuga Lab’s accusations that two defendants had made millions of dollars from counterfeit versions of its ‘Bored Ape Yacht Club’ NFTs.
In October 2023, a California federal judge ordered the defendants to pay more than $1.5 million in damages for their copies of Yuga Labs’ NFTs, which they had said was an art project meant to criticise supposedly racist imagery in the Bored Apes tokens.
The lawsuit has continued into this year with the California district court imposing a $9 million fine on the defendants in February covering damages, fees and costs, and the defendants filing an appeal.
Opposing Yuga Labs’ motion for summary judgment on its false designation of origin claim, the defendants argued that NFTs were ineligible for trademark protection because they were intangible goods.
They said the US Patent and Trademark Office had rejected several of Yuga Labs’ applications to register trademarks because NFTs are not goods in trade, and argued that the Supreme Court had required tangibility for trademark protection in Dastar v Twentieth Century Fox (2003).
‘No limit on definition’ in Lanham Act
INTA urged the court to avoid an “overextension of the narrow holding” in Dastar, which it said dealt with communicative content rather than communicative products.
The association argued that the Lanham Act refers to the registration and use of trademarks in relation to any goods or services, without limiting definition—which therefore included NFTs.
The act focuses on consumer perception and the meaning of trademarks to consumers, INTA said, also pointing to the qualities that digital goods share with tangible goods as noted by the district court.
“In summary, the district court here correctly held that NFTs, if understood as digital goods comprising a set of tokens that reference underlying digital assets via the token metadata, are goods for purposes of the Lanham Act,” INTA told the court.
It said that this approach would uphold trademark protection in new digital ecosystems in a way that benefitted consumers and brands.
