Pulp Fiction dispute for NFTs and the Hallowiener Case

TARANTINO’s NFTs

The worldwide known film director, Quentin Tarantino, has announced his intention to release NFTs, based on his acclaimed film, Pulp Fiction (1994). 

In short, NFTs (Non-Fungible Tokens) are defined as new digital assets, powered by Blockchain technology, in which all the transactions are recorded. In other words, NFTs contain data stored in the form of artistic works, that can be traded on the blockchain. More information can be found here: https://ati.ec.europa.eu/news/non-fungible-token .

While Tarantino’s fans celebrated this announcement, Miramax studios, which owns the intellectual property rights on the film, sent him a cease-and-desist letter to cancel the sale, to no avail. 

Consequently, a lawsuit was filed in the U.S. District Court for the Central District of California against Tarantino, denouncing him for trade mark and copyright infringement, as well as breach-of-contract. Miramax argues that Tarantino did not inform them of his intention to issue NFTs, motivating that their lawsuit is necessary to enforce and protect their intellectual property rights on the Pulp Fiction movie. 

From his side, Tarantino argues that NFTs didn’t exist in the 90s, when the film was produced, and that therefore, this specific type of exploitation was not foreseen in his contract with Miramax. Furthermore, the director retained some reserved rights to the film, including amongst others “print publication (including, without limitation, screenplay publication, ‘making of’ books, comic books and novelization, in audio and electronic formats as well, as applicable), interactive media, theatrical and television sequel and remake rights, and television series and spinoff rights.” 

For this reason, the director considers that the “print publication” clause allows him to scan and produce the NFTs from his handwritten script, which, according to him, was in any case produced before the contract with Miramax. 

The auction has been released for 7 digital copies of his handwritten screenplay of the movie, which will include unedited movie scenes and comments from the director. Fans will have access to bid with Ethereum cryptocurrency in order to purchase the NFTs.  

What is interesting about Tarantino’s NFTs is that they will include the so-called “Secret NFTs”, which differ from traditional NFT assets in some aspects, since the transactions are recorded on a secret blockchain and include public and private metadata. It is a way to make privacy possible, since private ownership is foreseen and allows the content creator to control who has full access to their content. This new concept of secret content differs from blockchain principles, according to which the identity of the owner is usually accessible and the ownership information and transactions are public.

This court dispute makes evident the fact that the existing IPR framework, as well as the standard contractual clauses that have been in use over the past decades, are not always well-suited to new forms of digital works such as NFTs. Here, there is no clear answer as to who owns the rights to exploit the Pulp Fiction screenplay in this new form – yet the outcome of this dispute is likely to be financially substantial for the winning party.

If you are seeking additional information about Tarantino’s NFTs, you can visit https://tarantinonfts.com

HALLOWIENER CASE

Last week the General Court, in Case T-500/20, ruled an interesting decision concerning the European Union Trade Mark (EUTM) “Hallowiener”, in relation to the assessment of evidence of genuine use in trade marks. 

Everything started in 2011, when the company Selmikeit & Giczella GmbH filed an application before the EUIPO, for its word trade mark “Hallowiener”. This registration was granted for products included in classes 29 and 43, mainly “meat and meat products”. In fact, the trade mark “Hallowiener” was used for Vienna style sausages, which were mostly sold during the Halloween period. 

In November 2017, the company Boehmert & Boehmert Anwaltspartnerschaft mbB filed an application for revocation of the trade mark “Hallowiener”, for all goods and services, arguing that no genuine use had been shown during the 5 years following the EUTM registration, as established in article 58.1.a) of the Regulation (EU) 2017/1001 of The European Parliament and of the Council of 14 June 2017 on the European Union trade mark. 

This article rules that a trade mark could be revoked – meaning that, if the application is successful, the trade mark will be considered invalid from the date on which the request is made to the EUIPO – if during the period of 5 years following the trade mark registration, “the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use”. 

The cancellation division of the EUIPO, and at a later stage the Boards of Appeal of the EUIPO, granted Boehmert & Boehmert’s request of revocation for non-use, since they considered that the documents and proofs of use submitted by the right holder were not sufficient to demonstrate a genuine use of the EUTM during the relevant period.

Consequently, the EUTM’s proprietor, Selmikeit & Giczella GmbH, lodged an appeal before the General Court, demanding that the decision of the Boards of Appeal be rejected. 

For the sake of demonstrating the genuine use of the EUTM “Hallowiener”, the appellant included as proofs of use, advertising catalogues from supermarkets announcing some of its products, a website extract and invoices regarding the sale of some products to supermarkets. In addition to this, more evidence was submitted afterwards, such as a licensing agreement concluded with a German supermarket for the use of the EUTM “Hallowiener”, and 4 images without any reference to the place, date or time, regarding a sales campaign for the products. 

The Court concluded that the evidence provided by the appellant, considered as a whole, did not succeed in demonstrating a genuine use, taking into account that some of the above-mentioned evidence was anterior to the EUTM registration and therefore, not applicable to the relevant period. 

An interesting claim is invoked by the appellant, in paragraph 47, with regards to the seasonal character of the product. As suggested by the name “Hallowiener”, the products boost their sales during the Halloween period. As a consequence, the appellant pointed out that the requirements of genuine use should be lowered. Finally, the Court ruled that there is no need to lower those requirements, taking into consideration that the appellant did not manage to demonstrate a serious use of the EUTM, neither during the months from September to November. 

This decision highlights the importance of submitting the relevant means of evidence, when assessing genuine use of a trade mark, as they are considered extremely important in the context of a revocation procedure. 

Decision available here.