In November 2021, Miramax filed a case against Quentin Tarantino after the filmmaker announced his plan to sell non-fungible tokens (NFTs) based on his original handwritten script of 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 a tentative ruling on Miramax’s motion to compel production of all of Tarantino’s documents and communications relating to his IP rights in Pulp Fiction, although the case’s ultimate outcome remains to be seen.

Litigation surrounding new and novel IP issues typically offer lessons for future litigants. There are a few notable issues coming out of this case, which is to be expected given that this is an emerging area of law.

First is the question of 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.

Additionally, under US copyright law, small numbers of copies to a small number of people is not considered publication. The exception to this is where there are no limitations on further distribution. Miramax contends that Tarantino reserved rights to screenplay publication and that the sale of only a few script pages is a one-time transaction, not screenplay publication. Because Tarantino plans to allow his buyers to distribute the NFTs as they wish, it would appear that this may fit the exception.

Finally, Miramax’s trademark registrations do not cover NFTs.

The Central District of California has now issued a tentative ruling on Miramax’s motion to compel production of all of Tarantino’s documents and communications relating to his IP rights in Pulp Fiction, denying it in part as overbroad and disproportional. The court agreed that Tarantino’s request to search through 28 years of records relating to any IP rights for Pulp Fiction constituted harassment and would produce minimally relevant results, especially because he consistently alleges that the basis for minting NFTs is his reserved rights to publish the screenplay based on former agreements.

Still, the court’s ruling was unclear on whether Tarantino specifically claimed to own any copyrights or trademarks related to the Pulp Fiction NFTs and thought it an appropriate area of inquiry. Thus, Tarantino was compelled to produce any copyrights or trademarks that he contends he has for the Pulp Fiction NFTs and their source and any other IP rights that he contends he has in the film and its source.

Communities discussing NFTs and intellectual property are curious about the effect of pre-existing IP rights on proactive enforcement and NFT litigation. This is being played out firsthand here as the presence and absence of trademark or copyright registrations have been cited to the disadvantage of both parties. Practitioners intending to prevent the Miramax issue should enhance their clients’ current portfolio registrations with fresh applications to cover NFTs. These fresh registrations would also help to streamline the takedown processes on NFT platforms. Alternatively, practitioners seeking to help clients promote brands through NFTs need to assess the content of the proposed NFT with the clients’ rights and agreements with third parties to ensure that there are no ownership issues.  Due to the expenses and unknown outcomes, it appears that providing certainty is key for plaintiffs and defendants in these early cases.

This article originally appeared in World Trademark Review Weekly on April 14, 2022, and is reprinted with permission.