In November 2021, Miramax filed a lawsuit against Quentin Tarantino after the filmmaker announced plans to sell non-fungible tokens (NFTs) based on his original handwritten script from the 1994 film. pulp Fiction, of which he is the author. The studio alleged breach of contract, trademark infringement, and copyright infringement (Miramax LLC v Quentin Tarantino, 2:21-cv-08979-FMO-JC). The Central District of California has now issued an interim decision on Miramax’s motion to compel production of all documents and communications from Tarantino relating to its intellectual property rights in pulp Fictionthough the ultimate outcome of the case remains to be seen.
Litigation surrounding new and innovative intellectual property issues generally offers lessons for future litigants. There are a few notable issues that emerge from this case, which is to be expected given that this is an emerging area of law.
The first is whether the original 1993 contract between Tarantino and Miramax gave the latter the right to mint NFTs (as the complaint alleges) or whether Tarantino’s reservation of rights in the transaction encompassed this.
Also, under US copyright law, a small number of copies to a small number of people is not considered a publication. The exception to this is when there are no limits on further distribution. Miramax maintains that Tarantino reserved the rights to publish the script and that the sale of just a few pages of the script is a one-time transaction, not the publishing of the script. Because Tarantino plans to allow his buyers to distribute NFTs however they choose, it would seem that might fit the exception.
Finally, Miramax’s trademark registrations do not cover NFTs.
The Central District of California has now issued an interim decision on Miramax’s motion to compel production of all documents and communications from Tarantino relating to its intellectual property rights in pulp Fiction, partly denying it as too broad and disproportionate. The court agreed that Tarantino’s request to search 28 years of intellectual property rights records for pulp Fiction constituted harassment and would produce irrelevant results, particularly because he consistently alleges that the basis of the NFT strike is his reserved right to release the script based on old agreements.
Still, the court ruling was unclear as to whether Tarantino specifically claimed to own any copyrights or trademarks related to the pulp Fiction NFTs and I thought that was a suitable area of investigation. Thus, Tarantino was forced to produce any copyrights or trademarks he claims to have for the pulp Fiction NFT and their source and any other intellectual property rights it claims to have in the film and its source.
Communities discussing NFTs and intellectual property are curious about the effect of pre-existing intellectual property rights on proactive enforcement and NFT litigation. This plays out here at first hand, as the presence and absence of trademark or copyright registrations have been argued to the detriment of both parties. Practitioners wishing to prevent Miramax should enhance their clients’ current wallet records with new applications to cover NFTs. These new listings would also help streamline withdrawal processes on NFT platforms. Alternatively, practitioners looking to help clients promote brands through NFTs should assess the content of the proposed NFT with client rights and third-party agreements to ensure there is no property issues. Due to the expense and unknown outcome, it appears that certainty is essential for plaintiffs and defendants in these early cases.
Taft Stettinius & Hollister LLP
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