By Sepideh Nassabi -Litigation and Intellectual Property lawyer and Carol Liu (Student-at-Law)
In a previous article, we reported on the dispute between Hermès and Los Angeles artist Mason Rothschild over Rothschild’s sale of MetaBirkins online. Hermès had not authorized the use of its Birkin trademark. It’s safe to say that the impact of non-fungible tokens (NFTs) is felt by intellectual property owners in every industry, from high fashion to film, from trademarks to copyrights.
On the docket about artist NFTs is a legal claim between Miramax and Quentin Tarantino. Miramax launched a lawsuit against Tarantino in November 2021, alleging that Tarantino committed breach of contract, copyright infringement, and trademark infringement in his proposed online auction of Pulp Fiction NFTs. This dispute has sparked much commentary and debate on the many yet-unanswered questions generated by the intersection of NFTs, intellectual property rights, and the interpretation of contracts.
What happened?
On November 2, 2021, Tarantino announced his plans to auction off NFTs involving the 1994 film, Pulp Fiction. The NFTs are meant to be collectors’ items, including seven uncut scenes from the movie, the uncut first handwritten scripts, exclusive custom commentary from Tarantino, and exclusive “front cover” art. All the exclusive content is viewable only to the owner of the NFT. Later that month, Miramax sent Tarantino a cease-and-desist letter regarding these planned NFTs. Tarantino responded that the limited set of “reserved rights” retained by him with respect to Pulp Fiction entitles him to proceed with the proposed NFTs.
Upon receiving Tarantino’s response, Miramax launched this claim to accuse the director of a breach of contract and infringement of intellectual property rights. Miramax argues that its original 1993 contract with Tarantino grants it the right to mint NFTs related to Pulp Fiction, and Tarantino’s reserved rights with respect to the screenplay do not cover the sale of NFTs. Clearly, Miramax’s preference would be for the company to profit from the sale of NFTs, not the director.
A copy of the Miramax claim can be found here.
NFTs and possible infringement
As we mentioned in our article about MetaBirkins, if someone wishes to mint an NFT of an existing trademark or copyright, they would likely need to obtain permission from the trademark or copyright holder or risk being sued.
To state the obvious, the original 1993 contract does not explicitly mention NFTs, nor does it dictate to whom the NFT rights shall go. The “reserved rights” clause that Tarantino seeks to rely on states that he retains the following right to Pulp Fiction:
print publication (including without limitation screenplay publication, “making of” books, comic books and novelization, in audio and electronic formats as well, as applicable).
On the plain meaning of the contractual language, it is unclear how the parties’ rights should be determined. It remains to be seen whether US courts will accept Miramax’s argument that the contract’s language should be interpreted to support the finding that Miramax is the only party with the right to mint NFTs derived from Pulp Fiction. As for Tarantino’s position, the question that arises from the contract’s language is: does minting an NFT of an unreleased script of the film qualify as “printing” or “publishing”?
Given the notoriety of the film and the director involved in this case, several American law professors have penned articles commenting on this dispute. Some of them have said that while the outcome of the litigation is difficult to predict, Miramax’s position seems to be weaker than Tarantino’s. We will be following this case closely as updates become available.
If you have questions regarding your trademark or intellectual property in the physical or the virtual world, contact Registered Trademark Agent and Litigation Lawyer Sepideh Nassabi at snassabi@mindengross.com.