In this episode, Sheppard Mullin attorneys Jim Gatto and Yasamin Parsafar continue to explore intellectual property considerations in NFT licensing, this time focusing on how IP owners can ensure their licenses are binding on the purchasers of NFTs containing their intellectual property. Topics discussed include the way IP licensing terms may be passed on to an NFT owner, what steps IP owners should take to ensure specific license provisions are enforceable, and how they can modify license terms if necessary.

About Jim Gatto

Jim Gatto is a partner with the Intellectual Property Practice Group in Sheppard Mullin's Washington, D.C. office, where he co-leads the Blockchain & Fintech Team. His practice focuses on blockchain, interactive entertainment, digital art, AI, and online gambling. He advises clients on IP strategies, development and publishing agreements, licensing and technology transaction agreements, and tech regulatory issues. Jim has been involved with blockchain since 2012 and has been recognized as a thought leader by leading organizations, including Best Lawyers in America 2021-2022; Cryptocurrency, Blockchain and Fintech Trailblazer, The National Law Journal, 2018; and Thought Leader on Blockchain & Cryptocurrencies, National Law Review, 2018. 

About Yasamin Parsafar

Yasamin Parsafar is a partner with the Intellectual Property Practice Group in Sheppard Mullin's San Francisco office, where she serves as co-leader of the firm's Blockchain & Fintech team. Her practice focuses on protecting her clients' intellectual property rights through counseling, prosecution, enforcement, and litigation. Yasamin leverages her litigation experience to strengthen and protect her clients' intellectual property, manage risks, and position businesses to succeed in the event of a dispute. She frequently advises and protects brands venturing into web3 on various issues related to non-fungible tokens, metaverses, games, online marketplaces, and other platforms.

What We Discussed in This Episode

• Is it correct to assume that IP licensing terms are passed to the NFT owner through the metadata or smart contract?
• Many NFTs are purchased through third-party platforms. Are a platform's terms of service equivalent to an NFT license agreement?
• How can IP owners work with a third-party NFT marketplace to ensure their license terms are passed on to purchasers?
• What constitutes legal acceptance of license terms by an NFT owner?
• How can an IP owner ensure all license provisions, including arbitration and waiver of class action provisions, are enforceable?
• Can IP owners modify license terms? How do they go about doing so?
• What other recommendations or tips would you offer to IP owners looking to ensure their license terms are binding on NFT owners?

Contact Information

Jim Gatto

Yasamin Parsafar

Resources

The Legit Ledger Episode 1: Intellectual Property Considerations for Licensing NFTs with Yasamin Parsafar and Jim Gatto

The Legit Ledger Episode 3: Licensing Considerations for NFT Creators and Owners with Jim Gatto and Gabe Khoury: Sheppard Mullin

This podcast is for informational and educational purposes only. It is not to be construed as legal advice specific to your circumstances. If you need help with any legal matter, be sure to consult with an attorney regarding your specific needs.