Time Sensitive Deadlines For Providing The Government Information On Intellectual Property Issues And NFTs – Trademark

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.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.