[Column] What happens if you create NFTs of other registered trademarks or registered designs, famous trademarks?

Can minting NFTs after copying trademarks or designs, or famous trademarks, be allowed?

Andy Warhol, an iconic pop artist, became famous by creating works based on ‘Campbell’ Soup Cans, and the Warhol artworks often include the trademark ‘Campbell’. So, is it permissible to create works based on someone else's trademarks without their permission? If such works are minted and created as NFTs for sale, would that be acceptable?

A key element to consider is that many logos and symbols, motifs, phrases, or even the appearance of products like the Olympic rings are registered trademarks.

For example, the Coca-Cola bottle shape is a globally recognized form, so minting content based on this shape could lead to trademark infringement or copyright violations, such as Chanel, Louis Vuitton, Burberry, or Daks logos.

However, it is important to note that trademark infringement only occurs if the use of the trademark is ‘specifieical use’ – that is, if it is used to indicate the origin of the product (the manufacturer).

What is ‘specifieical use’?

The core function of a trademark is ‘source indication’. That is, a trademark's primary function is to indicate the origin of a product – who manufactures it. For example, the trademark ‘Poca Chips’ for ‘Chip’s Snacks’ is owned by Orion. Therefore, when ‘Poca Chips’ is used on a potato snack product, it indicates the manufacturer, Orion. If Orion didn’t produce potato snacks but used the ‘Poca Chips’ trademark, that would be a misuse of the trademark and constitute infringement. This is when trademark infringement occurs. Using a trademark to indicate the origin (manufacturer) is ‘specifieical use’, and any misuse of it is trademark infringement.

What happens if you use a trademark without ‘specifieical use’?

Let’s consider a scenario: A publishing company, A, holds the trademark ‘Campbell’ Soup. If A is not affiliated with the company, another publishing company, B, publishes a book titled ‘Campbell My Best’. If B uses the ‘Campbell’ trademark, it would be trademark infringement because it could mislead consumers into believing that the book was produced by A. However, if B uses ‘Campbell’ in the title of its book to describe its content – that is, to explain that the book is about ‘Campbell’ techniques – it would not be trademark infringement. Using ‘Campbell’ in this way does not indicate the origin of the book; it simply describes the book’s content.

Similarly, the name ‘Linux’ is trademarked by a publishing company, A, for its book series. If A has no relationship with another company, B, publishes a book titled ‘Linux My Best’, B would not be infringing on A’s trademark.

This type of situation occurs frequently. Therefore, when minting content and listing it on NFT marketplaces, if the metadata uses someone else’s trademark, but this use is not for indicating origin, but for accurately describing the content, it can avoid trademark infringement liability.

However, it is important to pay attention to situations where there is no confusion of origin. This will be discussed in the next installment.

Thank you. Attorney Mr. Seungjong Oh, Legal Counsel, Law Firm Veat.