I have an old agreement with an artist granting me use rights under its arts, when NFTs were still unknown – can I use the art for an NFT?
Select jurisdiction
Germany
Sec. 31a of the German Copyright Code allows the grant of rights for “unknown use
cases” in copyright license agreements. Typically, standard license agreements contain
such a clause to avoid shortage of rights for future technological developments
unknown at the time of execution of the relevant license agreement. Written form is
required!
In case of a new use case formerly unknown, the licensee has to inform the creator
about its intention to use the work for the formerly unknown use case. The creator can
then decide to withdraw its earlier grant for these rights within a period of 3 months,
however, the creator cannot withdraw its grant in case it receives an additional and
reasonable compensation based on the economic value of the new use case.
For clarity: Older license agreements without an “unknown use case” clause will most
likely not allow the licensee to use the work for NFTs. Such right will vest with the
creator.
For further clarity: “Total Buy-Out” provisions, which are common in other jurisdictions,
typically will not cover unknown use cases, if they are at all valid under German law.
The predominant “Zweckübertragungslehre” in Germany suggests that the creator only
provides as much of a use right for its work as it is absolutely necessary to fulfill the
contractual purpose. Total buy-outs are in contradiction to this principle.
Italy
To the extent that NFTs are certificates that prove ownership of a digital asset, the act of minting
an NFT related to a digital copy of an asset should not be considered an act subject to copyright.
Therefore, in principle, if the old agreement with the artist included the right to reproduction of
the artwork, I can make digital copies of it and sell them, and each one of them could be combined
to an NFT.
Should minting of NFTs be considered a new kind of use right, then it is fundamental to look at
what the contract provided. Most contracts, for example, provide clauses that grant “all rights in
and to the artwork now or hereafter known”, or similar. In this case, even the new right to mint an
NFT of the artwork may be considered included in the agreement.
Greece
In accordance with Greek law, the granting of power for methods of exploitation that
were not known at the time of creation of the licence, is not included in the scope of
the license granted. In other words, if NFTs were still unknown at the time of granting
use rights, then the licensed cannot use the art for an NFT, but a new specific license
is required.
France
In the absence of case-law on the subject, there is today no clear answer to this
question. The answer will first depend on the old agreement itself and whether such
agreement provided that the artwork could be exploited “under any format known or
unknown” at the signature date. The answer will also depend on whether French
courts will rule that creating/minting/transferring an NFT constitute a reproduction or
representation of the artwork under the meaning of the French Intellectual Property
Code.
Turkey
In Turkish law, it is possible to transfer the authority to use financial rights, and with a duly
concluded license agreement, the owner of the work will be able to transfer the authority to
use the financial rights specified in the contract and enumerated one by one. For this reason,
the license agreement will determine the scope of the rights of the licensee. That means, as in
the example of financial rights transfer agreements, it is necessary to specify which financial
rights are transferred in license agreements. When the conversion of the work for which the
license right is obtained into NFT is evaluated as the processing of that work, it will be
necessary to evaluate whether the usage authority of this right has been transferred to the
licensee. It will need to be evaluated from various perspectives, such as whether it is
transferred to the field or not. At this stage, NFT-specific regulations, etc. Reasons such as the
lack of case law in this area cause uncertainty in terms of how the courts will decide in the
event of a possible dispute. Again, it will be necessary to evaluate whether the creation of an
NFT from the work in question constitutes a violation of other rights of the owner of the
work, such as reproduction rights, and whether the authorization to use these rights is
transferred to the licensee by a written contract.
Brazil
No, it is necessary to be stipulated in a contract with a specific clause establishing the possibility of using NFTs, because according to the Copyright Law, article 4, legal transactions on copyright are interpreted in a restrictive way. If there is no express stipulation, the work cannot be used for this purpose.
United States
Ultimately, the agreement's terms will dictate whether you have the right to use the art for an
NFT. Given the novelty of NFTs, your agreement is unlikely to address whether you can use the
art for an NFT. Many agreements, however, cover situations where new mediums are
contemplated and will extend to NFTs and other mediums that now exist or may exist in the
future. It is imperative to speak to an Intellectual Property Lawyer to understand what rights you
truly have before using any art for your NFT
Canada
It would depend on how this old agreement was drafted and which rights were granted to you
exactly. When in doubt, it’s always better to check with a lawyer to make sure you are
authorised. As well, if possible, you may want to contact the artist to discuss prior to minting the
NFT.
