Ethan Ostroff, Genna Garver, Glenn Pudelka, and Straat Tenney discuss the Ninth Circuit's pivotal decision in Yuga Labs v. Ryder Ripps, which recognizes NFTs as goods under U.S. trademark law.
In this episode of The Crypto Exchange, hosts Ethan Ostroff and Genna Garver welcome Glenn Pudelka and Straat Tenney from the firm's Intellectual Property Practice Group. They discuss the Ninth Circuit's pivotal decision in Yuga Labs v. Ryder Ripps, which recognizes NFTs as goods under U.S. trademark law. This ruling is a significant advancement in extending intellectual property protections into the digital realm, impacting brand owners and creators in virtual marketplaces.
The conversation covers the court's decision to overturn a $9 million judgment against Ryder Ripps, citing a lack of consumer confusion with Yuga Labs' Bored Ape Yacht Club NFTs. The group analyzes the court's reasoning and the potential for different outcomes in future cases, emphasizing the fact-specific nature of intellectual property disputes involving NFTs.
The episode also explores the broader dynamic legal landscape of NFTs, examining their classification under the Lanham Act and strategies for intellectual property protection. Glenn and Straat offer insights into their practices and their intersection with digital assets, emphasizing the importance of clear terms and conditions for NFT companies.
The Crypto Exchange — NFTs on Trial: The Yuga Labs Verdict and What It Means for the Digital Frontier
Hosts: Ethan Ostroff and Genna Garver
Guests: Glenn Pudelka and Straat Tenney
Aired: November 4, 2025
Ethan Ostroff (00:03):
Welcome to another episode of The Crypto Exchange, a Troutman Pepper Locke podcast focusing on the world of digital assets. I'm Ethan Ostroff, one of the hosts of The Crypto Exchange, and a partner in Troutman Pepper Locke's Consumer Financial Services practice. Before we jump into today's episode, let me remind you to please visit and subscribe to our blogs ConsumerFinancialServicesLawMonitor.com and TroutmanFinancialServices.com. And don't forget to check out our other podcasts on Troutman.com/Podcasts. Today, my co-host, Genna Garver and I are joined by our colleagues Glenn Pudelka and Straat Tenney, members of our firm's Intellectual Property Practice Group. And we're looking forward to discussing the Ninth Circuit's recent decision in Yuga Labs versus Rider Rips, which formerly recognized NFTs as goods under US Trademark Law, at least as it applied to the facts of that case, right guys? And this I think potentially marks a pretty pivotal step in extending intellectual property protections into the digital realm, reinforcing the rights of brand owners and creators in increasingly virtual marketplaces.
We're going to explore the dynamic legal landscape of NFTs, talk a little bit about their classification of the Lanham Act strategies for people to consider for IP protection and some other implications for NFT companies as terms and conditions. So Glenn Strat, thanks so much for joining Jenna and I today. We thought maybe this is the first time you guys have joined us on our podcast. We're really stoked to have you guys. I thought we might start with each of you, given our listeners some insight into your practices and how your work in your IP practices intersects with digital assets. So maybe Glenn, you could go first.
Glenn Pudelka (01:55):
Absolutely. Thanks for having me, Ethan and Genna. Yeah, I'm Glenn Pudelka. I sit in our Boston office. I'm a partner in the Intellectual Property Group. I focus predominantly on copyrights and trademarks and a lot of licensing work, also websites, all aspects of websites, terms of use, privacy policies, et cetera. And then I also spend a good deal of time more and more these days with a few clients of ours who are in the NFT space and have asset backed NFTs, meaning there is a artwork or some type of good that is either digital or physical that is attached to the NFT and working through the legal minds since there is not a lot of case law right now on what happens, which makes our lives very interesting. So Straat over to you.
Straat Tenney (02:47):
Yeah, thanks, Glenn. Ethan, Genna, thanks for having me. Straat Tenney is my name. I'm in New York. I am a trademark attorney primarily also do other soft IP on the trademark side. My practice is split between portfolio management and litigation and portfolio management is a big umbrella, includes clearing marks, prosecuting them to registration and also enforcement and then dovetail enforcement dovetail into the litigation both federal and also at the TTAV. I've assisted Glenn somewhat on trademark rights and NFTs as they become more popular and even less popular with some sometimes. Could it be a flash in the pan? I'm not sure, but it's definitely an evolving area of the law.
Ethan Ostroff (03:37):
Great. Thanks guys. Perhaps we could begin by digging in a little bit into the Yuga Lab's decision by the Ninth Circuit and talking about some of the background. So the ninth Circuit in late July comes down with this decision establishing that NFTs can be subject to trademark protection, although my understanding is that the court stopped short of actually finding there was infringement in that case, and in doing so, overturned a $9 million NFT trademark judgment against writer rips who was an artist behind a copycat NFT and reached that decision citing a lack of consumer confusion with Yuga Labs as Bored Ape Yacht Club. NFTs. Maybe you guys could just start with a little background about what was at stake and quickly just describe how the case got up to the ninth Circuit and the posture and then maybe talk a little bit about what happened to the ninth Circuit and what the decision was.
Glenn Pudelka (04:34):
Sure. Maybe we could take one step back and we'll talk a little bit about the IP that gets attached to these asset backed NFTs and STR can talk a little bit about the Lanham Act and then we can go into what the case was about. So obviously with NFTs, the asset that the NFT attaches to that says I'm the owner of that often has copyright protection because it's an image, it's artwork, it's a trading card, it is an image that's a tweet of which there is some sort of copyright protection associated with that asset. The owner of the NFT that is attached to that asset doesn't necessarily own the asset itself, meaning the underlying IP in that asset. Similar to a book, I buy a copy of a book, I own that copy of the book, but I don't own the underlying intellectual property in that book or the underlying copyright in that book. Then there's also trademarks as we're going to discuss today, and presumably there could be other rights of publicity of folks in an NFT as well. I think those are predominantly the three. Straat, what have I missed? And maybe you can give a primer or a quick one on the Lanham Act.
Straat Tenney (05:44):
Thanks, Glenn. Seems like you covered it on the trademark side here. What we're primarily concerned with is unfair competition. Unfair competition was the only statute available for the plaintiff here because they didn't own any registered rights. So what the Lanham Act does is it provides claims for instances where a company uses a trademark is likely to cause confusion with another senior user's trademark. And what you have to do is you have to prove one ownership of a mark, two likelihood that the junior user's mark is likely to cause confusion with the senior user's mark. And so the Lanham Act is split into really well, there are actually a number of cause of action, but here most relevant is infringement of a registered trademark and infringement of an non-registered trademark common law mark Here there are no registered trademarks and so plaintiff Yuga Labs was forced to go with an unfair competition claim.
Why does that matter? Really a registered trademarks basically easier. There are presumptions of ownership, presumptions of validity, which Yuga Labs then has to prove that when it comes to an unregistered mark. Which brings us to the initial question of whether there is a trademark here. All trademarks must be used in connection with a good or a service. You can't just reserve a name. You have to actually be doing something, selling something, providing a service. And so is this a good or a service? The court asked, and I think they answered the question, yes, but I think what's important here is what is included in the NFT. So when I purchase a Bored Ape Yacht Club NFT, what do I get? I get the n ft, I get my name on the ledger, or at least the indication that I own it. I also get a authentication of the artwork. So that's the copyright that Glenn was talking about. It also is a membership pass. So I can go to fun Bored Ape events, I guess where it gives a holders the exclusive access to online and offline social clubs, branded merch, interactive data spaces and celebrity events, exciting stuff, but there's still something there. And so this is more than just an NFT, this is kind of a past this special club exclusive at least.
Genna Garver (08:07):
I actually saw a fascinating documentary a few weeks ago. It's called Minted, and that gives a good glimpse into this world of NFTs and it includes this historical view of how bored apes came to be and how artists are making a living in this new world of NFT. So if anyone is having trouble conceptualizing all of the details about this particular NFT or NT in general, I definitely suggest that as a good little primer. So now that we've had this decision, what steps should an NFT minting company do to protect its intellectual property going forward?
Straat Tenney (08:51):
Here we had an NFT that had more than just the ledger, just the software and the ledger. This was something that was really a package of good, but also provided access to other things. And so I think that if you're in the business of minting NFTs or if you are an artist and you're looking to get into the business, or even anyone really, you own the rights to a funny meme, one way to ensure that you have protection is one, make it a package of something else other than just the image. What are you providing them? And that's not just to protect the NFT you selling NFTs as a good, but it also helps provide additional protection for services. And so if you have events for your NFTs or the club members, that is your organizing events, that's also a service under the Trademark Act. And so you're not only just providing the actual good, but you're also, you're providing a platform for purchasing the good, perhaps selling the good as well. Those are retail services under the LANDAM Act. And so really the question in this case was whether it was a good or not, which the court said, yes, it is a good, but it's really just it's a package of goods and services that you're providing
Glenn Pudelka (10:03):
And straw that would mean as an owner of these assets and NFTs, you could register that mark with the USPTO, correct?
Straat Tenney (10:12):
Yes, you can register it as actually selling the actual products, the goods. And then you could also, arguably, if you're holding events or you have a platform where you're selling and reselling, you could also register it as a service assuming it's the same mark. And so the Bored Ape Yacht club, they get registered as class nine. Good. They get also registered as a class 35 retail service because they have a platform for selling. And then those events, the member events, that would be a class, I think 43 or organizing events for club membership clubs. It's not just class the good that we're talking here, we're talking, it's kind of, oh, then the merch too, class 25 for T-shirts or whatever mugs, I forget what that is, 21 or whatever. There's definitely a range of products and services that you would be able to provide or at least secure protection for. And I think that this is an important case, and it's good that the court came out and said it, but because there were so many ancillary services involved with the Bored apes that if the court had said no or say that it's only just an NFT and say the court didn't think that was a good, there's other avenues to protection as well.
Glenn Pudelka (11:25):
And I would just add that the asset based in this case Bored Ape Yacht Club created the assets that were backed that the NFTs were attached to. So they own those as well. So there are copyrights in those images and they could register those images as well with the US Copyright Office. So that one aspect that this portion of the case didn't discuss was sort of the copying that rips and the defendants had done of the apes that they had created from the beginning. So I do think that as a company who is saying, I want to start selling NFTs for assets, that's one way to sort of set yourself up for the most protection.
Ethan Ostroff (12:05):
Is it typical for NFTs not to be registered with the USPTO? That's
Straat Tenney (12:10):
A good question. I'm not sure why Bored Ape didn't protect it, probably because they just weren't thinking about it. I haven't looked online to see if they own anything, but it could just have been an oversight that's really not that big of a deal they thought. And so because we have sought protection for some clients for both the goods and then the ancillary services, I
Glenn Pudelka (12:30):
Think they were just making too much money to be able to focus on their IP protection.
Ethan Ostroff (12:36):
I was just curious if it's unusual or atypical for NFTs to also get registration status with A PTO or if there are barriers to that that might've prevented alap from doing that. Just as in general barriers to NFT protection in particular in the past administration.
Glenn Pudelka (12:58):
It depends on, I guess the company. To Straat's point, Bored Ape was doing way more than just selling digital cards that had NFTs. They had this whole basically an online social club or that also spilled into real world social club. So they were providing goods and services beyond just the NFTs. I think for say other clients that we have who sell NFTs, their brand, their house brand, they don't just sell NFTs. So they have a house branched registered because they sell other physical goods that are goods and services that they sell under the classes that STR mentioned. And they would also fall and register for NFTs as one of the goods or service that they sell on their online apps or in their marketplaces.
Ethan Ostroff (13:47):
Okay. Yeah, that makes sense. I was wondering, I mean, do you guys see this as this decision? I did not read this as a decision that means all NFTs qualify for trademark protection. I read it as this was a very fact intensive, very particularized facts involving Yuga Labs and everything they were doing. So there's not a universal rule here. So there is still uncertainty and the possibility of different outcomes under different facts. I mean, do you guys agree NFTs can also be treated as services in certain situations, as you were describing, where they primarily function as access credentials for things like memberships or subscriptions. But this legal classification really sort of boils down to actual use and context. So you could get a different result in different cases that are litigating the same issue depending on, for example, the main purpose. So it could be next time an NFT could be recognized as a service, their main purpose is provide entry to an experience.
Straat Tenney (15:00):
So I think that this decision that the court only went as far as it needed to go, which I think is appropriate when we are dealing with a new technology or new thing. And so I think the court did a good job at focusing on what the facts of the case are. But if we're going to move forward and say that you do have an NFT, I guess what it could be is how are you selling your NFT? What is it labeled as? What's the hang tag say? So I guess the good example is for t-shirts, if you just have your mark across the front of a t-shirt, say Pepsi right here, it's a Pepsi advertisement. It's not a Pepsi branded that says Pepsi on the hang tag in the back. And so arguably that's a ornamental use of that mark. So when people see the brand, are they looking at the hang tag or are they looking at whatever the ornamental piece on that ornamental phrase or mark on that? And so will consumers see bored ape say that if it's on the NFT of the actual art of the NFT, but it isn't anywhere else, then yeah, arguably that's not actual trademark use of whatever that mark is bringing back to the question that Jenna had, what should people do? Use it as a trademark and what does that mean? You yell it from the rooftops, basically tell the world that this is identifying your product. This is who you are, it's your hang tag, it's your garment label and the collar of your shirt
Glenn Pudelka (16:28):
Or whatever it is that has a Pepsi logo on it or whatever.
Straat Tenney (16:31):
But also it's trademark rights. Don't just stop at the product. If you're hosting events, that's a service. If you're organizing those events, it's also service. But if you're providing a platform for everyone to talk about stuff on a chat, you're providing that chat, you're providing that platform or your store, your online retail store, and they don't have to be the same thing here it was. And that's one thing that was interesting in this case was they were only talking about the good. They weren't talking about any of the other ancillary services, which made sense because the defendant wasn't doing the events, they weren't doing all the other stuff. But certainly if I'm bringing this case, I'm talking about the goods, but I'm also talking about all the other stuff we do. We have a platform that's important. The retail store, the defendant in this case had a retail store where they're selling their NFTs that's very relevant on trademark confusion. Like not only are they copying our goods, but man, their store is the same name as our store. And it's just one more area of copying. And I didn't look too deep into this is where on appeal. And so that could have been relevant back early when it was with the district court. And so I didn't look too deep at what was argued or asserted just really focusing on this decision.
Ethan Ostroff (17:43):
So guys, maybe some other things from this opinion by the Ninth Circuit are worth talking a little bit more specifically about. My recollection is one of the things the court said was that the Bored Ape NFTs are more than a digital deed two or authentication of artwork. And I was hoping you guys might be able to unpack that for our listeners and explain a little bit more about what that means and why that's relevant.
Glenn Pudelka (18:11):
I think what they were saying it is, it's not just the ledger entry, right? NFTs and the court talks about this in the beginning of what is an NFT, right? I always look at it in terms of the registry of deeds. I own the house, but then on the registry of deeds it says Glenn owns the house. Everybody knows that that's who the house owner is. That's technically the NFT that NFT says you own, which is part of the contract. I think that's important too, is the NFT has the smart contract attached to it, which then says, okay, this is the digital asset that you own and this is what comes with that digital asset. And to step back as to why this is good for artists, the NFT space is if I sell you my artwork, that transaction ends my relationship with that artwork.
I still own the copyright in that artwork, and you cannot make postcards or print it on t-shirts or hats without my permission. But that actual physical artwork is no longer in my possession. And if all of a sudden my artwork becomes very popular, if Ethan, you bought this for 10 bucks from me because I was a starving artist and now I've become very successful and you are now going to sell it for $10 million, I will not see any of that 10 million, right? I only got $10 when the smart contract allows any resale of that digital asset or that NFT to still have me get a percentage of any sale going forward. So I think in that sense, I think that's what the court meant in terms of it's more than just the ledger entry, right? There's an asset that's attached to it and that asset has a smart contract attached to that which provides for certain terms such that future sales of the NFT will still have benefit to the artist.
Genna Garver (20:04):
Is it fair to say that it's essentially putting on chain a certificate of authenticity for that artwork that can then be tracked and traced and with the smart contract tied back to their original artist or minting company, certain rights associated with that asset as it makes its way down the chain?
Glenn Pudelka (20:32):
I think that's fair. I think even the court talks about how they analogize it to, there are a thousand baseballs out there, but I got a baseball signed by Babe Ruth. I've created value now in that because I've limited the market and I've created something that has more value than it would be without that mark on it. Now, I don't think the mark that makes it value is the NFT necessarily, but it is because it's the one of one, right? No one else can have that copy. I'll admit I struggle with NFTs because I don't know why you would just want to look at something you've purchased on a computer when I could also look at that on the computer. Only you get to say yes, but I own that on the blockchain and I can look at it and say, well, I don't own it, but I'm looking at it. But clearly that creates value because in the world there's only one, and I'm the owner because that's what the blockchain says. That creates value because people want to own one of the first tweet, right? That's turned into NFT and sold for millions and everybody can see the first tweet ever. You just Google it, it'll pop up. But there's only one person out there who says, I own that tweet because the blockchain tells me. So
Genna Garver (21:51):
Yeah, I struggle with that too. And that documentary I mentioned, I minted goes through that a bit. I'm still not sure I totally get it, but I guess everyone had to decide what they do with their money.
Straat Tenney (22:06):
You get to go to parties with cool people.
Glenn Pudelka (22:10):
I think in this case, the fact of the matter is, the reality of it is, is that Bored Ape had a celebrity following, and that just added to the, I want to own this NFT because some other celebrity owns the Bored, Ape NFT, and maybe I'll get to meet that other celebrity someday at one of these events. If we all own Bored Ape NFTs. I mean, they had 10,000 NFTs and they sold them all out at 200, 100, $200 each at the time. I know that one resold for the court says at 24.4 million, not quite sure I understand that, but that's okay. It's what the market will bear.
Straat Tenney (22:47):
The value is what someone will pay for it.
Glenn Pudelka (22:49):
Exactly. The value is what someone will pay for it. I think what's important to maybe also talk a little bit about Ethan, is the arguments that defendants made as to why they said it wasn't a trademark and how the court said, no, we don't think that's the case. And at first their argument was, and we may have mentioned this earlier, that because the NFTs are securities that the sale of those was an unauthorized sale of securities. And as such, under trademark law, you do not get trademark rights in a service or good that you're selling. That violates the law. Is that a good way of putting
Straat Tenney (23:33):
It? Yeah, the most obvious example is cannabis. So it's legal on a state level, some state level, and it's illegal federally. You can't get registered protection for selling cannabis flour with THC on the federal register because it's illegal. And so the same thing applies here. And so the argument goes if Yuga Labs sells securities, whatever the product is, and it's a security and they have not registered, that'd be illegal under federal law. However, the court here, and I think it makes sense, the court here says there's not a nexus between the trademark question whether this NFT is source identifying and whether it is a security or not. And so not if they had registered it, would they be able to sell it, I'm sure. Whereas with cannabis, no, it doesn't matter. It's illegal from the start. And so the court found that there wasn't sufficient nexus between the failure to register security and the use of the trademark, which is the sale of the NFT.
Genna Garver (24:39):
Okay, so just to be clear, the court in this case wasn't assessing whether or not the NFT was a security, but for purposes of applying the trademark law and as to whether you are entitled to the IP protections, you have to come with clean hands. You can't be violating the law otherwise that was really the question that they were addressing, right?
Straat Tenney (25:09):
Right. Well, it just wasn't relevant to the question. They sidestepped it because they didn't need to. I asked the question again. I think the court did a good job here at answering questions that needed to answer and not diving into tricky questions where it really is a side issue. The question isn't is the product or necessarily is it, is the product or service illegal, but it's really, is there a connection between that violation, the illegality and the use of the trademark,
Glenn Pudelka (25:35):
Right? They just said there was an inefficient nexus there, inefficient nexus between purported securities violations and withholding it with trademark protection.
Genna Garver (25:45):
Thanks for that clarity. I think it's an important point to understand the context in which that issue comes up in this case because not to confuse everyone, but just about two weeks ago, we had a separate case in front of the US District Court in California where the judge dismissed plaintiff's allegations against Yuga Labs on the basis that they had not sufficiently alleged a violation of the securities laws. And the court found that they had failed to sufficiently allege that the NFTs were securities under the HOWIE test. Now that case goes into significant detail on whether or not their securities and the entire HOWIE test analysis and that case is actually likely to continue because I think the plaintiffs might replete their allegations by the end of this month. But for this case, whether or not the NFTs were securities were irrelevant to the court's findings. Correct.
Glenn Pudelka (26:52):
And then on the second argument that defendants made was that somehow if they were trademarks, they weren't owned by Yuga Labs and their argument there was the terms and conditions had stated that the owner of the asset that is the digital asset of artwork attached with the NFT would own that artwork. And that's where it's a little bit different than a lot of other NFTs that I deal with our clients is that a lot of the client NFTs are licensed material in. And so the final digital asset has got third party materials incorporated into it, whereas here, Yuga Labs created these apes images. And so when you bought that Ape image, you were being given the copyright in that a image to be able to do whatever you wanted with it. And the terms of you said that you owned it, including I believe the copyright.
And so they were saying, well, it says you own all IP rights, therefore the trademark rights that would go with the user as well, or the owner as well. And the court said, no, first off, there's no transfer of the goodwill that is required. If you're going to assign trademark rights, you have to assign not just the trademarks but the goodwill associated with them. And that was not listed anywhere in the terms and nor did the terms ever mention anything about trademarks. So they said that wasn't going to fly in terms of that somehow the individual owners would own the trademarks. I'm not even sure that I know how that would work if every owner got the IP rights in Bored apes.
Straat Tenney (28:33):
Yeah, I think that this maybe was just kind of clever attorney argument, but I didn't see anything here. One interesting part of this is, as I said before, trademarks require use. And so say that Yuga Labs sold 10,000 NFTs and then stopped because they have no more, more Bored Ape out there and they're not selling them anymore, not reselling them there. We have an argument that they abandoned their trademark because they're not selling 'em anymore. There ain't more out there. And so just they say, I'm a shoe manufacturer, I make 10,000 shoes and then I stop it and I let them go Percolate Avenue Marketplace. But that's not a sale, A sale, a sale, the subsequent sales. And so that could be arguably, I guess if Bored Ape just got out of the NFT business or just stopped and just relied on resale maybe. But then that's why the ancillary services are important is to say maybe that you've stopped selling your goods and there are no more NFTs, we just made X amount. But where are you selling them? You're selling 'em on your platform, your retail store. So that's a service. Are you still having those parties, the Bored Ape parties? Yes. Are And so then still have, so even if you don't have use of the NFTs or sale of those goods, you have the ancillary services as well.
Glenn Pudelka (29:52):
And then Ethan, I think you mentioned earlier what the court also went on to say and that this decision also reversed the lower court's finding of likelihood of confusion at this stage and reverted that back down. I think what they really just said was, okay, we've established that there are trademark rights here, but at the summary judgment stage, we haven't seen enough as a matter of law that there is confusion. Now, they suggested in the record that there were facts that suggested there was some confusion. I think one of the platforms that tracks NFT Sales and NFT pricing and Values, et cetera, had listed both Bored Ape and the DAYC of both the defendants and the plaintiffs as sort of the same or they were misrepresenting what sale had gone for, which because they couldn't tell based off that would suggest confusion in the marketplace because they're not sure which Bored Ape Yacht Club image is being associated with which entity. But I think the bottom line was they said at this stage, there needs to be more facts to prove this and that it shouldn't have been done as a matter of law that this was just a FTA complete.
Straat Tenney (31:15):
There've been a handful of cases in the trademark context coming from artists as the defendant where they sold NFTs that are packaged using IP trademarks or copyrights of famous brands or other brands. And almost universally, it's been basically a massacre for those artists. They've tried to hide behind the First Amendment and they've tried to assert their right to make parodies or social statements on it about whatever the thing that they're making fun of. There's the Meta Birkin case where an artist minted a series of NFTs using an image of a Birkin bag, and he tried to say, look, I'm an artist. This is just a comment on the commercialization of America. And however he sold it on a plat, he called them Met Birkins using the famous Birkin mark, and he sold it on the platform called Meta. And so the court really didn't have a problem saying, no, actually you're doing more than just providing commentary that you're using that name Meta Birkin as a trademark to identify the source of the products you're selling and your platform.
Genna Garver (32:30):
So how is that different than Andy Warhol's Campbell suit?
Straat Tenney (32:34):
Good question. Yeah, that's more of a copyright question,
Glenn Pudelka (32:37):
Right? So for Andy Warhol's Campbell Soup can, the argument is it's a fair use of the design of the soup can from a copyright standpoint because he's not using the design of the soup can for purposes of selling soup. There's a whole different purpose here, and we could talk about this for days. There's the Andy Warhol case recently with the image of Prince. The interesting thing out of that case based off of the Supreme Court is the fact that he created a work that hangs in the MoMA is probably a fair use because it's totally different from the image that was on the Rolling Stone magazine of Prince when he was young, to then turn around and license it to other magazines that want to use the Andy Warhol image versus the photographer who actually took the photo of Prince. Well, now they're saying that use is not fair because that is exactly what the photographer was in the business of doing, was taking photographs to put them on covers of magazines. And so even though the Warhol print is a, Warhol is a Warhol, the use matters. The use now becomes, it matters. So if somebody wanted to use Andy Warhol's Campbell Soup can on something else, that wasn't fine art, maybe it wouldn't be fair use. And then from the trademark side, I don't recall if Campbell's had an issue with him using this. It's probably fair use on the trademark as well, Straat, right?
Straat Tenney (34:01):
I would think so. They weren't selling it as Campbell’s Soup paintings on a platform called Campbell’s Soup Platform, whatever are us. And so I think that that's really what doomed Rothschild, I think his name was Rothschild as a defendant in that case, Rothchild, that doomed his case from the start because he was using it as a trademark. And Andy Warhol was out there yelling about himself, not Campbell soup. It was just piece of his art. And so I think that is a distinction here. And again, same with the Bored Ape in Yuga Labs, the Rider Rips. Rider Rips is using Bored Ape Yacht Club as a trademark. He has a platform where you can buy and sell them that uses that trademark as a storefront. He called each one of 'em the Bored Ape Yacht Club. And so there are a lot more connections. And so I guess there are any artists out there looking to do this. And you can by all means, make comments on products already out there. Absolutely. But man, just be careful using those product names or those brand names as a trademark to advertise your work.
Glenn Pudelka (35:13):
If they had used a different name and said that they were commenting or criticizing on the Bored Ape Yacht Club, I think they would've been okay, but they just were like, Nope, we're using Bored Ape Yacht Club and we're going to sell. And also made millions of dollars to remember. Right. So using the Bored Ape Yacht Club brand, that had become something to help themselves, which also was the Meta Birkins case a lot too, right? He was trying to claim, oh, I'm commenting and criticizing the Meta Birkin bag. Yeah, lots of people think they're commenting or criticizing after they get sued.
Ethan Ostroff (35:49):
My recollection is the opinion noted that RIP said linked to the same Ape images and embedded entries in a smart contract by signing the contract name is Bored Ape Yacht Club.
Glenn Pudelka (36:02):
Exactly.
Ethan Ostroff (36:02):
And the contract symbol is BAYC for each NFT and his collection. So that led to third party NFT trackers identifying both as having the same origin. In my mind, this keeps coming back to this analysis is highly particularized and dependent on individual cases.
Glenn Pudelka (36:23):
Yes, I think the facts do matter in most IP cases. It's going to be fact specific. And this case I think shows that because of the conduct of defendants and because of what the Ecolabs folks had done to RA's earlier points about the other services they were providing as well as the goods that they were selling, if they were different facts, they might not be coming out the same way. And so I guess my point for the terms and conditions, I think there was a little bit to glean from this in what the court was saying of striking down some of the arguments that the defendants were making in that make it very clear in your terms what the person who buys the asset based NFT is getting. What do they own? What do you not own? I think it didn't matter here, but I guess my recommendation for companies that are minting NFTs would be to very specifically say that the Marx associated with this are owned by them and all rights are reserved to them, and that the owner of the NFT does not get that. A lot of terms of use do say that just because you own the physical or not the physical, it's the exact opposite of the physical. Even though you own the digital asset, you do not own necessarily the underlying IP in the asset or the underlying IP of the company that sold you the asset.
Straat Tenney (37:48):
Yuga Labs is terms of use currently do have a trademark provision in it where they own all the trademarks,
Glenn Pudelka (37:56):
So they changed.
Ethan Ostroff (37:58):
Glenn Straat, thank you again for joining us today. I thought it was a pretty interesting discussion and really appreciate yall’s time. Genna and I want to thank our audience again for listening to today's episode. Don't forget to visit our blogs, subscribe so you can get the latest updates. If you haven't already, make sure you hit that subscribe button to our podcast, The Crypto Exchange via Apple Podcasts, Google Play, Stitcher, or whatever platform you use. And we're looking forward to our next episode.
Copyright, Troutman Pepper Locke LLP. These recorded materials are designed for educational purposes only. This podcast is not legal advice and does not create an attorney-client relationship. The views and opinions expressed in this podcast are solely those of the individual participants. Troutman does not make any representations or warranties, express or implied, regarding the contents of this podcast. Information on previous case results does not guarantee a similar future result. Users of this podcast may save and use the podcast only for personal or other non-commercial, educational purposes. No other use, including, without limitation, reproduction, retransmission or editing of this podcast may be made without the prior written permission of Troutman Pepper Locke. If you have any questions, please contact us at troutman.com.
DISCLAIMER: This transcript was generated using artificial intelligence technology and may contain inaccuracies or errors. The transcript is provided “as is,” with no warranty as to the accuracy or reliability. Please listen to the podcast for complete and accurate content. You may contact us to ask questions or to provide feedback if you believe that something is inaccurately transcribed.