Interview: IP Disputes in NFT transactions | Expert: Jason Rosenblum

Editor: Medha Mukherjee

Rohit: How would you like to introduce yourself to our audience?

My name is Jason Rosenblum and I’m the founding member of The Law Office of Jason H. Rosenblum, PLLC, an Intellectual Property Law Firm. So, we protect our clients – their products, their brands, their businesses – from getting ripped off, so they can focus on their business. 

We have clients in the software industry and many entrepreneurs who are starting their businesses, take my services. Back in 2008 and 2009, when a lot of people had their side gigs and their side hustles, which a lot of them have now made it full-time.

So, it’s great to see when a client quits their day job for the side job and it’s a success. My clients range from solopreneurs, all the way up to, you know – I think my largest client has around 300+ employees! 

Rohit: That’s really amazing! 

Jason: And…some of them, you know, even some of the smaller ones, their revenues are pretty high! So, you know, they’re very successful clients, in all sorts of areas- of fashion, music, a lot of software-based (or related to it). 

Rohit: So your clientele is very diverse, isn’t it?

Jason: Correct. You know, sometimes, we’d have patents, and attorneys will be very focused, in a very specific area, because that’s where their technical background is? But for the majority of the business – trademarks, design patents and copyrights – it might help to know a little bit about the technical aspect, but you know the fun part about it is learning something new in a particular area of study. 

Rohit: Yeah, exactly. So, whenever we talk about a “new area”, NFTs pop in! Do you think we have any legal work associated with NFTs? You know, majorly IP-related? 

Jason: Um, you know, I have a few clients in the blockchain field, that is, again, software related (blockchain), not you know, specifically with NFTs, but I have been speaking to some potential clients who are interested in taking some of their existing IPs, and turn them into NFTs of some sort. 

Rohit: Could you please tell us what exactly an NFT is? Because when I started to learn about NFTs, it was super-perplexing and extremely difficult to understand.

Jason: So, I think first we have to look back on blockchain. What is blockchain? It’s essentially a piece of ledger. So, in the States when you buy a piece of property, you usually record the deed with the county you bought it in. So this way, if someone wants to buy that piece of property, they can always check with the county deed registry to see who is the proper owner, and buy it from them.

The exact same thing we do with patents, with trademarks – you’re at the USPTO, you’re able to record  any sort of change in ownership. So if any company bought, or if a brand’s bought out from one company, you can always look, and they should register it at the USPTO. You can see, actually, who is the right owner – of that piece of property.

What the blockchain does, is make a decentralized ledger of ownership. And you know- it should not, if it’s done correctly – you can’t change it. So, you know it’s accurate, in a way. What NFTs are, they’re built on top of blockchain technology, and there’s only one of those tokens,  so that’s why they’re called non-fungible tokens (NFTs). This is so that you know, that whoever this person – whoever holds this, is the true owner because the blockchain can help prove that. 

Rohit: Okay, so here’s the confusion. What I believe is that anything gets its value because of the legal sanctity. Because, you know, you can prove your ownership in front of the court, that “Hey, I’m the real owner”. How would you prove the same in case of, say, if you hold an NFT? This aspect goes over my mind. Because there is no legal transaction, and no legal documentation. It’s simply a transaction over blockchain technology. Does it get any legal sanctity? Or does it get its value over something else.

Jason: Well I think that in some way, this whole blockchain technology is going to start  alleviating the need for some kind of legal aspects. Because a lot of that legal aspect is to ensure that someone complies with the legal contract. For blockchain and NFTs, you will be able to remove some of those, because you know, a smart contract will automatically execute when a payment is supposed to be made, and if something happens, they automatically checks it, so you know, you don’t have to rely on a person to do what they said they will do. 

Rohit: Definitely. 

Jason: Because the contact is essentially self-acting, the smart contract. So in place of getting rid of the law, it supplements it. This is done by way of contracts. You know, the one NFT that I did look at, it was of a regular contract – talked about the transfer of ownership of some items, and one of them was an NFT. So they do like to play together, but I like to look at blockchains like I would look at a deed, like you would, for a piece of property. And that shows who owns it, it shows the history of that, and it travels with it. 

Rohit: Well, that sums it up! Let’s talk about the main issue that we face with regards to this subject. After a transaction is completed, do you believe that there might be trademark disputes?

Jason: I believe I made a video on it not too long ago. Just because you have an NFT does not, all of a sudden take away all of the usual legal concerns you can have – like, “Is this NFT infringing on someone’s copyright?” | Is it infringing on someone’s trademark?” 

Rohit: When there is trademark infringement, you’d go and sue the person who’s infringing upon your intellectual property, right? So what action can the victim take to claim damages from an anonymous entity who’s having commercial benefit by selling someone’s trademark as an NFT? 

Jason: Well, you can always try and track down this “anonymous entity”. And, if anyone tries to sell your copyrighted work, they will be taking away rights exclusive to you as the copyright holder, but because of the nature of blockchain technology and NFT, it might be difficult to find out who they are.

So the best option would be to go to the NFT Marketplaces and alert them, and hopefully they’ll get taken down. It’s just like it happens on Amazon these days – or Ebay, or any of those places. Any copyright or trademark-infringing material, when brought to the notice of the correct authorities, they’re usually taken down. So, you know, you might not be able to stop them from trying to sell, but hopefully you’ll be able to stop them in open marketplaces so that it makes it harder for them to do that. 

Rohit: Many people suggest that blockchain is very dangerous – due to the anonymity it offers – and it should be banned. What’s your opinion on that? 

Jason: Would I ban it? No! I wouldn’t ban blockchain technology! If you think about it, everything on blockchain is out in the open. So every transaction, whatever is happening, is out in the open. You might not know who’s doing it, but you can trace the wallet – trace the transaction.

Whereas today, someone can steal the money and you’d have no clue where the money is and who the person is.  In the last year and a half, two years, the federal law enforcement – the FBI – has recovered a lot of stolen Bitcoins. They were able to track exactly where they were going. Now, I don’t know what technology they used to track it.  

Rohit: Right, so this understanding, that everything is “hidden” is definitely not true! Rather it’s the opposite. This technology is actually very open and things could be traced back. 

Jason: Well it might be hard to find someone right away, but it seems like at some point there’s a chance for you to start pinning it down who the person is, you know, somehow. In a regular crime, you might not even have that trail. 

Rohit: Who owns the copyright in an NFT transaction? 

Jason: For example, if you look at the NBA website, I’ve looked at it in the past, and you buy an NFT of LeBron James dunking – it specifically states there that you get no commercial rights, nothing, basically. You can’t license that to anyone else, you can’t do anything with it. You just get to use it as a status symbol – that’s there with a lot of NFTs. You just get to say, “I own this.” 

There’s a lot of things that can be done with it – this technology is still in its infancy. When you buy an NFT, just look at what you bought. They’re not all the same – some might come with more rights than another, but in general, just because you own the NFT doesn’t mean you own the copyrights. 

Rohit: Well, I think we have covered almost everything we could’ve about NFTs-

Jason: We haven’t covered everything, we only covered a small slice of the entire aspect! 

Rohit: (laughs) Yes. Definitely. Do you think there’s anything else in an NFT that you’d like to discuss that we may have missed? 

Jason: I think the main aspect is that you can’t get caught up in the image. There’s a lot more that can come along with it, you know. Like a lot of them are like a membership to a new club – it’s not just an image, I think there’s something called a “Flyfish” or something like that, and it’s like a dinner club! You get exclusive rights to go to a certain restaurant. 

Rohit: I think they’re called utility-based NFTs, am I right?

Jason: Oh I didn’t even know that there was a name for it! (laughs) But yeah, like I said, they could be used in any image, really.

Rohit: Jason I think we should conclude this meeting, because I do not want to take up more of your time. 

Jason: It was a pleasure speaking with you about this!  

Rohit: Thank you so much for your precious time! It was great to have this enriching discussion with you.