The retail and tech sectors are rife with legal battles that pit industry occupants – from luxury brands and resale players to sportswear titans and tech startups – and oftentimes, valuable elements of their branding and critical elements business models against one another. With the new year well underway, here is a look at an array of the currently pending lawsuits that are worth keeping a close eye on, as companies continue to clash over the use of their trademarks in connection with the marketing and sale of non-fungible tokens (“NFTs”), questions arise at the intersection of copyright law and AI-generated artwork, former crypto darlings fall from grace (potentially implicating their famous endorsers in the process), and celebrities and other big companies face off against reverse confusion-focused suits.

AI Art Lawsuits

Artificial intelligence (“AI”) artwork generators garnered a notable amount of attention in 2022 and have continued to do so this year, giving rise to nuanced legal questions for courts – and potentially, Congress. The ability of these AI systems to generate artistic outputs with little (if any human) contribution is presenting legal questions, namely, in the copyright registration and infringement vein. These issues are reflected in the following lawsuits …

(1) Thaler v. Shira Perlmutter, et al.

(2) Anderson, et al., v. Stability AI LTD., et al.

(3) J. DOE 3, et al., v. GitHub, Inc. et al.

(4) And to some extent … Yuga Labs, Inc. v. Ryder Ripps, et al.

Bad Spaniels + MSCHF v. Vans

Bad Spaniels is slated to get the Supreme Court treatment this year, with the nation’s highest court agreeing to take on the case, in which Jack Daniel’s has accused VIP Products of TM infringement in connection with the sale of dog toys that resemble a bottle of its Old No. 7 Black Label Tennessee Whiskey. SCOTUS’ certiorari grant comes on the heels of the U.S. Court of Appeals for the Ninth Circuit holding in March 2020 that the toy is an expressive work entitled to First Amendment protection.  While SCOTUS previously refused to take on the case, it granted certiorari this time around on two questions: (1) Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims? and (2) Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act?

At the same time, a separate TM case, which Vans waged against MSCHF, is being directly impacted by the Jack Daniel’s impending day in court. On the heels of oral arguments, which took place in September, the Second Circuit stayed further proceedings in Vans v. MSCHF until SCOTUS issues an opinion in Bad Spaniels.

Vogue v. Drake

Drake and 21 Savage landed on the receiving end of an interesting lawsuit in 2022, with Vogue’s parent company Condé Nast suing the two rappers for allegedly using the magazine’s name as part of a “widespread promotional campaign.” According to Condé’s Nov. 2022 complaint, Drake and 21 Savage have promoted their album Her Loss by way of a campaign “built entirely on the use of the VOGUE TMs and the premise that Drake and 21 Savage would be featured on the cover of Vogue’s next issue.” The problem, according to Condé: “All of this is false,” and no part of the “deceptive campaign” has been authorized” by the Vogue TM holder. 

The latest development in the case: SDNY Judge Jed Rakoff put a TRO and preliminary injunction in place, blocking Drake and 21 Savage from using the Vogue mark to promote their album.

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Nike filed what is sure to be a closely followed case on Wednesday, naming USAPE LLC – the footwear/streetwear company that does business as BAPE – in a trademark infringement and dilution lawsuit. In the complaint that it lodged with the U.S. District Court for the Southern District of New York, Nike asserts that it has spent decades building robust rights and corresponding goodwill in “some of the world’s most valuable trademarks,” and has “a legal obligation to stop copyists when their infringements pose a significant danger to [its] rights.” One such copyist, according to Nike, is BAPE, whose “current footwear business revolves around copying Nike’s iconic designs” and whose infringements have “recently grown to become a significant danger to Nike’s rights.” 

Setting the stage in the newly filed complaint, Nike alleges that since the 1980s, it has “continuously and substantially exclusively used, promoted, and sold sneakers” bearing the Dunk, Air Force 1, and Air Jordan 1 trade dress. As a result of its “continuous and long-standing promotion” of these sneakers, Nike asserts that it has generated substantial sales – it has sold “hundreds of millions of Air Force 1s,” alone, in the U.S, accounting for “billions of dollars in revenue,” and consumers have come to recognize products bearing Nike’s trademarks as coming from Nike or otherwise being authorized by Nike and thus, the company has developed “powerful trademark rights.”

Against this background, the Beaverton, Oregon-based sportswear titan claims that BAPE “introduced its first infringing footwear in the United States in 2005.” Seemingly looking to get ahead of the inevitable claims that BAPE’s counsel will make that Nike waited too long to take action and thus, is subject to various defenses, including laches, acquiescence, estoppel, etc., Nike argues that for the majority of that time, BAPE’s infringement was “de minimis and inconsistent,” and thus, did not warrant legal action. (You will recall that the 10-year-plus lag between when adidas became – or reasonably should have been – aware of Thom Browne’s use of a 4-stripe mark and when it actually filed a trademark suit against Thom Browne over such use was a key argument made by Browne’s counsel leading up to and during the parties’ recent trial).

In particular, Nike states that “at all times prior to 2021,” the quantity of BAPE’s infringing footwear in the U.S. never reached more than “a small fraction of the millions of pairs [of sneakers that] Nike sells annually.” Further defending its decision not to file suit until now, Nike states, “For fifteen years, the presence of BAPE’s infringing footwear in the United States resembled the famous Whac-A-Mole arcade game: infringing products appeared and then disappeared from the United States market for years; BAPE opened stores in the United States and then shuttered them a few years later; and BAPE was purchased by a Hong Kong fashion conglomerate that shifted BAPE’s focus to markets outside the United States.”

Also worth noting: Nike claims that “despite [BAPE’s] minimal presence in the U.S. market,” it, nonetheless, “contacted and met with BAPE in 2009 to address BAPE’s pirating of Nike’s iconic Air Force 1 design and to protect Nike’s intellectual property rights.” Following the meeting, Nike alleges that BAPE “significantly and materially diminished its U.S. activities.” For example, that same year, Nike says that BAPE founder Tomoaki Nagao “stepped down as BAPE’s CEO;” in 2010, BAPE closed “all but one of its U.S. stores;” in 2011, it “shifted its focus from its already waning U.S. presence to its Chinese and Taiwanese audiences following its acquisition by Hong Kong fashion conglomerate, I.T. Ltd.;” and in 2016, BAPE “redesigned the BAPE STA to less resemble Nike’s designs.”

Escalating Infringement

However, circumstances changed in 2021, per Nike, as BAPE began to “drastically increase the volume and scope of its infringement,” “rapidly expanding its physical presence” in the U.S. (opening new brick-and-mortar stores in New York, Los Angeles, and Miami), and introducing various versions of the SK8 STA, the COURT STA, and the COURT STA High models, “all of which are copies of iconic Nike designs.” Specifically, Nike contends that five of BAPE’s footwear products – the BAPE STA, BAPE STA Mid, SK8 STA, COURT STA High, and COURT STA – are “near verbatim copies of [its] Air Force 1, Air Jordan 1, and Dunk sneaker designs” and infringe the registered trade dress rights it maintains in the sneakers.

BAPE sneakers

(Nike’s trademark registrations extend to the overall shape/designs of the aforementioned sneakers – sans the Swoosh logo – including, for example, “the design of the stitching on the exterior of the [Air Force 1], the design of the material panels that form the exterior body of the shoe, the design of the wavy panel on top of the shoe that encompasses the eyelets for the shoe laces, the design of the vertical ridge pattern on the sides of the sole of the shoe, and the relative position of these elements to each other,” for use on footwear.)

Also an issue, according to Nike, CVC Capital Partners Asia V Limited recently “announced that it completed an investment in BAPE to support the expansion of BAPE’s business both online and geographically, with a focus of pursuing the United States market.”

On the infringement front: Nike argues that BAPE’s unauthorized use of the Dunk, Air Force 1, and Air Jordan 1 marks and/or confusingly similar marks runs afoul of its rights in the “famous and well-known” sneakers, as the lookalike sneakers are likely to confuse consumers into believing “in error that BAPE’s infringing products have been authorized, sponsored, approved, endorsed, or licensed by Nike or that BAPE is in some way affiliated with Nike.”

As for its trademark dilution claim: Nike contends that its asserted marks are “commercially and conceptually strong marks, which have become distinctive and acquired a secondary meaning capable of dilution prior to BAPE’s acts as alleged herein.” In particular, Nike says that BAPE’s use of “substantially similar” marks is “likely to dilute [its own marks] at least by eroding the public’s identification of the asserted marks with Nike and by lessening the capacity of the asserted marks to identify and distinguish Nike footwear products.”

Wrapping up the complaint, Nike contends that “BAPE’s copying is and always has been unacceptable … and because BAPE’s infringements have recently grown to become a significant danger to Nike’s rights,” it has no choice but to “act now.” Nike asserts that it “notified BAPE of its infringements and asked it to stop,” but instead of ceasing such alleged infringement, “BAPE continues to escalate its infringing activity,” prompting Nike to “bring this lawsuit to stop [such] unauthorized use of [its] trademarks.”

Nike sets out claims of federal trademark infringement and false designation of origin/unfair competition, as well as trademark infringement and dilution under New York General Business Law. It is seeking injunctive relief to bar BAPE from continuing to make, market, and sell the allegedly infringing footwear, and monetary damages, including an award of three times the amount of compensatory damages and increased profits.

A rep for BAPE was not immediately available for comment.

The case is Nike, Inc. v. USAPE LLC, 1:23-cv-00660 (SDNY).

Hong Kong has slowly but surely reopened to the world after a prolonged period of isolation due to strict COVID-centric restrictions. As of the second week in January, most restrictions had been eased and green shoots were starting to appear in Hong Kong’s economy. Despite the pandemic, Hong Kong remains a global powerhouse and strategic area in trade and commerce, including in the luxury sphere. Based on the research of the Hong Kong Trade and Development Council published in November 2022, Hong Kong remained the world’s sixth largest exporter of merchandise trade in 2021, the same as that in 2020. At the same time, the Hong Kong International Airport was the world’s busiest airport for international air cargo and ranked ninth in the world in terms of container throughput in 2021.

Against this background, it is not surprising that the Hong Kong Customs & Excise Department (“HKC&E”) reported significant quantities of – and achievements in seizing – counterfeit goods (to be sold locally or to be transshipped to other locations) in its 2021 Annual Review. HKC&E reported that 715 infringing cases were detected, and 404 arrests were made that year, representing an annual increase of 21 percent and 36 percent, respectively. In addition, the number of infringing items seized had increased by 170 percent to 3.15 million items, while the seizure value reached around HK$166 million ($21.2 million). This represents an increase of 51 percent compared to 2020’s figure.

This upward trend appears to have continued throughout 2022, which HKC&E will most likely report in the upcoming Annual Review, as there have been significant seizures of counterfeit goods made by HKC&E, some of which include … 

(1) In April, HKC&E seized some 21,000 counterfeit products destined for Belize in Central America in an inspection at the Kwai Chung Customhouse Cargo Examination Compound. The products seized included luxury handbags, hats, shoes, sunglasses, etc., with an estimated value of HK$2 million ($255,706);

(2) A couple of months after, in June, the HKC&E confiscated HK$11.6 million ($1.5 million) worth of fake brand-name products ranging from handbags, footwear, mobile phones, and fashion accessories and arrested five people in a three-week citywide operation. HKC&E believed that most of the seized counterfeits would be further exported to the United States, Europe, and the Middle East, while some would be sold locally;

(3) Counterfeit perfume and cosmetic products with an estimated market value of about HK$360,000 ($46,027) were seized in October; and 

(4) Ahead of the FIFA World Cup in Qatar, HKC&E seized over 100,000 counterfeit football jerseys worth over HK$50 million ($6.4 million) in a two-week special operation. 

In related reporting, U.S. Customs and Border Protection (“CBP”) offices recently released data that sheds light on the 2022 fiscal year, with the CBP Office in Louisville, Kentucky revealing that its “top individual seizures” of the year included: (1) 860 counterfeit designer bracelets, including ones branded as Dior, coming from Hong Kong to Florida; (2) 5,652 pieces of counterfeit jewelry heading from Hong Kong and to Virginia; and (3) 1,438 pieces of counterfeit jewelry shipped from Hong Kong to New York. “Had they been real, the total value of the three shipments would have been $10.13 million,” CBP stated in its release this month.

MOVING FORWARD: Looking at this rise in activity, brand owners will need to keep Hong Kong front of mind when it comes to their brand protection strategy in Asia, especially in light of its status as a key transshipment hub for the region. The HKC&E continues to engage in significant seizure operations as a result of counterfeit goods landing or transiting in the city. As such, it is important that brands ensure that they have adequately-focused protection strategies in place, including Customs Recordals with HKC&E. (Customs Recordals are a unique and valuable method for combating infringements.)

Despite the Hong Kong being cut off from the world during prolonged COVID restrictions, counterfeit goods landing in – or transiting through – the city have not slowed down. This is expected to continue throughout 2023 with the recent opening of Mainland China and the continued dismantling of COVID restrictions in Hong Kong.

Adelaide Yu is a Principal based in Rouse’s Hong Kong SAR office, specializing in the enforcement and protection of IP, including trademarks, copyright, patents, and registered designs

Robert Rigets is the Assistant IP Manager at Rouse.

With a jury trial pitting Hermès against Mason Rothschild over the latter’s MetaBirkins NFTs swiftly approaching, the parties are angling to get the court to block certain evidence from being admitted at trial, filing respective motions in limine with the U.S. District Court for the Southern District of New York on Monday. The impending trial comes one year after Hermès filed suit against Rothschild in a New York federal court, accusing him of trademark infringement and dilution in connection with the promotion and sale of the allegedly-confusingly-named NFTs. The case has been closely watched in light of the fact that it raises some novel – and nuanced – questions about the applicability of “real world” trademark rights, the doctrine of fair use, and First Amendment protections in the virtual world. 

Ahead of the start of trademark and web3-centric MetaBirkins trial later this month, counsel for Rothschild is looking to get the court to exclude a number of Hermès’ proposed exhibits, either in their entirety or certain portions thereof, as well as any testimony concerning such excludable portions. Specifically, Rothschild is aiming to get the court to exclude … 

1. Select Social Media Posts, including “comments from unidentified third parties” that Hermès intends to offer as evidence of actual confusion regarding the source of the MetaBirkins NFTs. Taking issue with the posts, which likely show social media users expressing their beliefs that the MetaBirkins NFTs are authorized/sponsored by Hermès, Rothschild argues that “anonymous online comments should be excluded because they are inadmissible hearsay and are not otherwise evidence of actual confusion and, thus, not relevant to any issue to be tried in this case.” 

In particular, Rothschild’s counsel claims that Hermès “has not identified the authors of any of these social media accounts … making the authors’ identities, meaning, and intent unknown and unreliable.” And even if the social media posts were inadmissible, Rothchild argues that “they do not show or suggest that [his] use of Hermès’ [Birkin] trademark could inflict commercial injury in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation,” as there is “no indication that these social media posts were created by actual or potential customers of either Mr. Rothschild or Hermès.” 

2. Testimony of Boriana Guimberteau – This is the “lawyer highly familiar with the metaverse and the fashion industry [that] was confused and explicitly misled by [Rothschild’s] use of Hermès’ trademarks” that Hermès referenced in its amended complaint. While “Hermès intends to offer [her testimony] as evidence of actual confusion,” Rothschild claims that Guimberteau is “bears no relationship to potential or actual MetaBirkins consumers and therefore is not probative of likely confusion.” There is also a risk of prejudice, per Rothschild, as Guimberteau is a lawyer “who represents luxury fashion brands and claims to be knowledgeable about NFTs – and is therefore likely to be improperly perceived as … a witness whose testimony is to be accorded greater weight.”

3. Post-Litigation Statement & Certain Communications by Mr. Rothschild – Rothschild is also looking to block a certain – redacted – statement that he made in “private communications to his friends and associates about his lawyers in this case.” He argues that the statement is “irrelevant to the issues to be tried in this case, highly prejudicial, and only likely to distract or confuse the jury.” 

Rothschild is similarly looking to block messages – again, redacted – that he made after Hermès filed suit that reflect his “layman’s view,” presumably of the case/law. The messages “have no relevance or probative value to any issue to be tried,” his counsel argues, and “Hermès’ only purpose in seeking to introduce [them] would be to smear Mr. Rothchild’s character in general.” 

Moving on to Hermès’ motion, the Birkin bag-maker is seeking to get the court to preclude … 

1. The Testimonies of Dr. Blake Gopnik & Dr. David Neal – According to Hermès, Rothschild “proffers Dr. Gopnik as an art expert to support his defense that his promotion and sale of the METABIRKINS NFTs is protected by the First Amendment.” The brand’s counsel argues that Dr. Gopnik should be precluded from testifying on the basis that his “opinion is not based upon any reliable data or methodology to support his mere ipse dixit assertions;” he “opines on ultimate legal conclusions;” his opinions “do nothing more than repeat Rothschild’s account of his own statements and actions;” and he “improperly interprets and opines on Rothschild’s intent in creating and promoting the METABIRKINS NFTs.” 

(Note: The Yuga Labs v. Ryder Ripps case gets a mention here, with Hermès asserting that “Dr. Gopnik’s opinion about transactions qualifying as ‘Business Art’ is contradicted by a recent ruling” in that case, in which Ripps, “invoking Rogers v. Grimaldi, argued that certain NFT transactions qualified as expressive works protected by the First Amendment.” The court disagreed, per Hermès, “explaining that under Rogers, ‘[t]hese are all commercial activities designed to sell infringing products, not expressive artistic speech protected by the First Amendment.'”)

Hermès is also looking to block the testimony of Dr. David Neal, who is slated to rebut the survey evidence of actual confusion collected by Hermes’ expert on the basis that Neal’s opinions and testimony “are not based upon a reliable survey methodology, they do not aid the trier of fact, and if permitted, would be unfairly prejudicial to Hermès.”

2. Proposed Trial Exhibits – The bulk of Hermès’ pushback comes in response to evidence that Rothschild is seeking to introduce that it claims, “has nothing to do with either his METABIRKINS NFTs or Hermès’ infringement claims,” including images of Andy Warhol and other artists’ works and post-filing interviews. 

“As he has in the press and in other filings,” Hermès states that most of Rothschild’s arguments are aimed at claiming that “he is somehow protected” – from trademark liability – “because other artists have engaged in conduct (unrelated to Hermès’ or BIRKINS) that he believes is analogous to his own.” Likewise, he “appears to argue that because others have had projects involving the BIRKIN name or design, that somehow provides him with a safe harbor to exploit the same in connection with METABIRKINS NFTs.” But this evidence is “irrelevant,” according to Hermès, and, even if it was relevant, it is more prejudicial than probative. 

Perhaps the best example of these claims (which will almost certainly come up during the MetaBirkins trial), Hermès contends, is Rothschild’s references to Andy Warhol and the Campbell’s Soup can paintings. While “neither Warhol nor Campbell’s Soup have anything to do with this case,” Hermès argues that Rothschild is looking to introduce evidence of Warhol’s work, which would “create a false equivalence” between himself and “Warhol’s storied career [that] would only serve to confuse the jury and any faint probative value is dwarfed by the resulting prejudice to Hermès.”

As such, “any reference to Warhol for the purpose of claiming that acceptance of his work as ‘art’ immunizes Rothschild from infringement liability for the METABIRKINS NFTs should be excluded.” (This builds upon the claim that Hermès made in its complaint that Rothschild “seeks to immunize himself from the legal consequences of his appropriation of Hermès’ famous trademarks by proclaiming that he is solely an artist.”) 

More than that, Hermès argues that “the nature and extent of Warhol’s claim to be an ‘artist’ as opposed to an ‘infringer’ is currently before the U.S. Supreme Court” in the Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith case that “will examine whether Warhol had the right to use someone else’s photograph under copyright law.” Given the complexities of the legal issues in the ongoing Goldsmith case, Hermès asserts that “it is simply inaccurate for Rothschild to suggest or imply that Andy Warhol was acting within the bounds of the law and that Rothschild is therefore provided a safe harbor.” 

Still yet – and delving into another argument that will undoubtedly arise at trial (with or without the evidence at issue), Hermès states that its key claim against Rothschild is for trademark infringement stemming from his use of the METABIRKINS name in connection with the METABIRKINS NFTs, which are “associated with images of handbags that, by Rothschild’s admission, are meant to look like Hermès’ BIRKIN bags.” With this in mind, Hermès argues that “Rothschild has tried to argue that [its] claim is about the images alone, [but] that is incorrect,” according to Hermes, which states that “even Rothschild does not argue that the pieces of code that create the NFTs, and are labelled METABIRKINS, are ‘art.’”

While the images are “important, of course,” Hermès argues that simply “comparing this case to Warhol’s Campbell’s Soups images” – with the help of corresponding exhibits – “is highly flawed.” 

Beyond Warhol, Hermès also claims that Rothschild should not be able to bring in third-party evidence concerning “artistic” uses of Hermès’ BIRKIN trademark and/or trade dress, including images of photographer Tyler Shields’ work and songs by Beyonce, Cardi B, and Gunna. “Once again, just because other individuals or entities may have been involved in projects related to the BIRKIN mark or handbag does not mean Rothschild has that right,” Hermès contends. “Once again, this is to create the same type of false analogy: Rothschild seeks to protect his own behavior based on that of others. This has been a repeated theme during depositions and will be repeated at trial if these exhibits are not precluded.”

And finally, the brand argues that news articles discussing details of this action should be precluded, as while “Rothschild and his counsel have spoken to the media about this action and the parties’ claims,” neither Hermès nor its counsel have done so. As a result, it claims that such coverage of this case “was susceptible to bias,” and should not be included. 

The case is Hermès International, et al. v. Mason Rothschild, 1:22-cv-00384 (SDNY).

Yuga Labs is doubling-down on its action over an allegedly infringing collection of non-fungible tokens by way of a new lawsuit. On the heels of filing a trademark lawsuit against Ryder Ripps and Jeremy Cahen in a California federal court in June, the company behind the Bored Ape Yacht Club (“BAYC”) has filed a complaint against developer Ryan Hickman, arguing that by “creat[ing] and commercializ[ing] websites and a smart contract to sell the intentionally misleading RR/BAYC NFTs to the average consumer,” Hickman is “a central part” of Ripps’s RR/BAYC venture, one that was allegedly designed to “explicitly mislead consumers” into believing that the “knockoff” NFTs are authorized or otherwise sponsored by Yuga Labs. 

According to the complaint that it filed in a federal court in Nevada on January 20, Yuga Labs asserts that artist Ryder Ripps enlisted Hickman to develop the RR/BAYC smart contract,, and, all of which allegedly make use of Yuga Labs’s BAYC trademarks, in furtherance of a larger effort to “profit off of Yuga Labs’ goodwill and trademarks by flooding the NFT market with their intentionally misleading copycat NFT collection using the original Bored Ape Yacht Club images and calling the NFTs ‘RR/BAYC’ NFTs.” Yuga Labs contends that it has used those marks – which range from an ape skull logo to the “Bored Ape” word mark – since at least April 2021 across its “website, social media pages, marketing, and in connection with its partnerships, products and services.” (Note: Yuga Labs runs through a long list of trademarks in the complaint, all of which it says it maintains common law rights in, as it has not yet been issued registrations by the U.S. Patent and Trademark Office, although it points to many pending trademark applications.)

Some of Yuga Labs' trademarks

In addition to taking action against Ripps and Cahen, Yuga Labs alleges in the newly filed lawsuit that Hickman similarly ran afoul of the law when he: (1) “developed and coded” the RR/BAYC smart contract to “allow consumers to ‘reserve’ an RR/BAYC NFT”; (2) developed the “” website and the Ape Market website, which make use of Yuga trademarks; (3) “ratified, supported, and implemented” the sales of RR/BAYC NFTs on NFT marketplaces, such as Foundation and OpenSea; (4) “ratified and supported explicitly misleading uses of Yuga Labs’ marks” on the Etherscan page for the purpose of tracking/authenticating RR/BAYC NFTs;  and (5) promoted the RR/BAYC venture on social media. 

“Despite knowing that he had no rights in the BAYC or APE marks,” and also being “aware that it was likely confusing to consumers” to use Yuga Labs’s marks on the RR/BAYC site, Ape Market, smart contract, etc. given that “the two NFT collections were visually identical,” Yuga Labs argues that Hickman made such use of the marks anyway. To make matters worse, Yuga claims that “Hickman made no bona fide, non-infringing, commercial use or fair non-commercial use of the domain names,” and instead, opted to use the BAYC marks in order to “divert consumers looking for [Yuga Labs’s] goods/services online to the [RR/BAYC-affiliated] websites.”

Because Hickman “did not distinguish his use of Yuga Labs’ BAYC marks from the identical look, sound, and commercial impression of his and the RR/BAYC team’s use of these marks,” Yuga Labs maintains that his use of the mark to promote and sell RR/BAYC NFTs is “likely to cause, and has caused, confusion and has mislead consumers into thinking the RR/BAYC NFTs are in some way sponsored, affiliated, or connected with Yuga Labs’ Bored Ape Yacht Club.” 

With the foregoing in mind, Yuga Labs sets out claims of false designation of origin and cybersquatting on the basis that Hickman’s conduct is “directly and proximately causing substantial, immediate, and irreparable harm and injury to Yuga Labs, and to its goodwill and reputation.” The BAYC-creator is seeking injunctive relief to bar Hickman from continuing to make use of the BAYC marks that “falsely suggests that he and the products and services he promotes with the BAYC marks are connected with, sponsored by, affiliated with, or related to Yuga Labs,” and monetary damages. 

Despite Yuga Labs’ claims to the contrary, Ripps has argued from the outset that the RR/BAYC venture is “a form of ‘appropriation art’ that serves several purposes, including: “(1) bringing attention to [Yuga Labs’s] use of racist, neo-Nazi, and alt-right messages and imagery; (2) exposing [Yuga Labs’s] use of unwitting celebrities and popular brands to disseminate offensive material; (3) creating social pressure demanding that [Yuga Labs] take responsibility for its actions; and (4) educating the public about the technical nature and utility of NFTs.” 

The case is Yuga Labs, Inc. v. Ryan Hickman, 2:23-cv-00111 (D. Nev.).