;
Image: Unsplash

The U.S. Patent and Trademark Office and the Copyright Office are seeking public comment in connection with a joint study they are conducting regarding “issues of intellectual property law and policy associated with non-fungible tokens (‘NFTs’).” The Offices state in a newly published notice that they are seeking public comments on these matters from now until January 9 to assist then in their work on “IP policy related to NFTs” – which they describe using the Merriam-Webster definition: a unique digital identifier that cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership (as of a specific digital asset and specific rights relating to it – and “in conducting the study.” 

In connection with the call for public comments, the USPTO and the Copyright Office set out 13 points (see them in full below), primarily asking commenters to list “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).” In an additional industry-specific inquiry, the Offices ask, “How and to what extent copyrights, trademarks, and patents are relied on, or anticipated to be relied on, in your field or industry to: (a) Protect assets that are associated with NFTs; (b) Combat infringement associated with NFT-related assets offered by third parties; and (c) Ensure the availability of appropriate reuse of NFT-related assets.”

In a similar vein, they are also interested in how and the extent to which NFTs are used by or could be used by IP rights holders to document: the authenticity of an asset; and a seller’s right to offer up an asset for sale, and to transfer any relevant or necessary IP rights associated with an asset, among other things. 

Looking at challenges and opportunities that come with the adoption/use of NFTs, the Offices want to know of “any IP-related challenges or opportunities associated with NFTs or NFT markets,” as well as “whether, how, and to what extent NFTs are used by, could be used by, or present challenges or opportunities for IP rights to: obtain rights, transfer or license rights, and enforce those rights. 

And in a question that will presumably draw some Hermes v. Rothschild and Nike v. StockX references, the Offices ask commenters to “describe any IP-related impacts those in your field or industry have experienced in connection with actual or intended uses of NFTs,” including “any legal disputes that have arisen … and the outcome of such disputes.” And beyond that, they are seeking comment on whether “current IP laws [are] adequate to address the protection and enforcement of IP in the context of NFTs,” and if not, what are the “gaps in current IP laws” and what “legislation should be considered to address these issues.” 

The questions follow from an announcement from the U.S. Copyright Office and the USPTO this summer, in which they confirmed that they will carry out a joint effort to examine issues related to NFTs amid rising questions – and legal disputes – centering on the novel technology. The Offices’ July announcement came after Senators Patrick Leahy and Thom Tillis, who respectively serve as the Chairman and Ranking Member of the Judiciary Subcommittee on Intellectual Property, made a formal request that the two Offices undertake a joint initiative to help the Subcommittee to understand “how NFTs fit into the world of intellectual property rights,” including what those rights look like today and how they may evolve in the future.

Questions for Public Comment

In the release on Wednesday, the Office state that they “welcome comments from members of the public on any issues relevant to the subject matter of this study, and are particularly interested in answers to the following questions.”

1. Please describe: (a) 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 (b) 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. Please describe any IP-related challenges or opportunities associated with NFTs or NFT markets.

3. Please describe how NFT markets affect the production of materials subject to IP protection.

4. Please 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: (a) The authenticity of an asset; (b) The seller’s ownership of or authority to sell an asset; (c) The seller’s authority to transfer any relevant or necessary IP rights associated with an asset; and (d) Any limitations related to IP rights surrounding the sale, or the purchaser’s use, of an asset.

5. Please 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. Please 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: (a) Obtain their IP rights; (b) Transfer or license their IP rights; (c) Exercise overall control and management of their IP rights ( e.g., digital rights management tools, mechanisms to facilitate the payment of royalties, etc.); and (d) 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. Please 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: (a) Protect assets that are associated with NFTs; (b) Combat infringement associated with NFT-related assets offered by third parties; and (c) 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. Please 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: (a) The relationship between the transfer of an NFT and the ownership of IP rights in the associated asset; (b) The licensing of IP rights in the asset associated with an NFT; (c) Infringement claims when either: (i) an NFT is associated with an asset in which another party holds IP rights, or (ii) IP rights in the asset associated with an NFT are owned by the NFT creator; (d) 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 (e) 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) A notification of claimed copyright infringement, counternotice or material misrepresentation, pursuant to 17 U.S.C. 512, in connection with an NFT; and (b) Other IP-related legal claims seeking the removal or reinstatement of NFT-associated materials.

For each such instance, please describe the nature and outcome of this claim or process, including whether the material was ultimately removed, and if so, whether the material subsequently reappeared. If an infringement or 17 U.S.C. 512(f) action was filed, please provide citations to the court docket and any relevant judicial decisions.

11. Please describe the extent to which adjustments are being made to IP portfolio planning and management in light of the emergence of NFTs.

12. Please describe any experiences in seeking IP protection for, or use of, assets associated with NFTs in foreign jurisdictions.

13. Please identify any additional IP issues associated with NFTs that you believe the Offices should consider in conducting this study.