January 27, 2023

Volume XIII, Number 27

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PTO and Copyright Office Seek Public Comments on Non-Fungible Tokens

On November 23, 2022, the US Patent & Trademark Office and the US Copyright Office announced that they are seeking public input on intellectual property (IP) considerations related to non-fungible tokens (NFTs). The agencies will hold three public roundtables directed to patents, trademarks and copyrights, respectively, scheduled as follows:

  • January 10, 2023 – Patents and NFTs

  • January 12, 2023 – Trademarks and NFTs

  • January 18, 2023 – Copyrights and NFTs.

The roundtables will be livestreamed, and the agencies will post instructions for registration to view them live. Requests to participate as a panelist in any of the roundtables must be received by December 21, 2022, to be considered.

The agencies also issued a request for comments, soliciting answers to 13 questions of particular interest:

  1. Describe current and potential future uses of NFTs in your field or industry.

  2. Describe any IP-related challenges or opportunities associated with NFTs or NFT markets.

  3. Describe 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 to

    1. Document the authenticity of an asset

    2. Document the seller’s ownership of or authority to sell an asset

    3. Document the seller’s authority to transfer any relevant or necessary IP rights associated with an asset

    4. 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.

  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 to

    1. Obtain their IP rights

    2. Transfer or license their IP rights

    3. Exercise overall control and management of their IP rights

    4. Enforce their IP rights.

  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

    1. Protect assets that are associated with NFTs

    2. Combat infringement associated with NFT-related assets offered by third parties

    3. 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, explain why 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. Describe any legal disputes that have arisen in the following contexts, and the outcome of such disputes, including citations to any relevant judicial proceedings:

    1. The relationship between the transfer of an NFT and the ownership of IP rights in the associated asset

    2. The licensing of IP rights in the asset associated with an NFT

    3. 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

    4. The type and/or scope of IP protection afforded to the NFT creator

    5. The application of one or more of the exclusive rights under 17 U.S.C. §106 to transactions involving NFTs.

  10. Describe any instances you have observed in which a party has sent or received

    1. A notification of claimed copyright infringement, counternotice or material misrepresentation, pursuant to 17 U.S.C. § 512, in connection with an NFT

    2. Other IP-related legal claims seeking the removal or reinstatement of NFT-associated materials.

    3. For each such instance, 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, provide citations to the court docket and any relevant judicial decisions.

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

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

  13. Identify any additional IP issues associated with NFTs that you believe the offices should consider in conducting this study.

For more details about the roundtables and request for comments and how to send comments, see the Federal Register notice. Comments must be received by January 9, 2023, to ensure consideration.

© 2023 McDermott Will & EmeryNational Law Review, Volume XII, Number 342
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About this Author

Bernard P. Codd, McDermott WIll Emery Law Firm, Intellectual Property Attorney
Partner

Bernard P. Codd is a partner in the law firm of McDermott Will & Emery LLP and is based in the Washington, D.C., office.  He focuses his practice on patent prosecution and opinions in the areas of semiconductor device and manufacturing, battery, fuel cell, photolithography, chemical, metallurgy, and polymer technologies.

202-756-8182
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