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, www.rrbayc.com, and www.apemarket.com, 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.)
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 “rrbayc.com” 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.).