The Ninth Circuit’s Split Personality: How NFTs Highlight a Concerning Split in the Court’s Application of Trademark Law to Web 3.0

Abstract

The Sleekcraft factors have been a cornerstone of the Ninth Circuit Court of Appeals' trademark infringement jurisprudence since 1979. However, recent trends within the Circuit reveal a split in application, with some district courts favoring trademark prosecutors and others favoring defendants. This divide is exemplified in the case of Yuga Labs v. Ryder Ripps, where differing interpretations of the Sleekcraft factors could significantly impact emerging technology and ecommerce practices. This Article delves into the implications of this intra-circuit split and proposes solutions to promote consistency and fairness in judicial outcomes. The Ninth Circuit uses two contrasting standards to weigh the Sleekcraft factors and evaluate trademark infringement cases, particularly in the context of the internet. While the Brookfield-GoTo.com standard emphasizes strict enforcement of intellectual property rights, the Brookfield-Network standard prioritizes flexibility and adaptation to evolving technologies. Each standard offers unique benefits and challenges, ranging from predictability and efficiency to innovation and understanding of technological nuances.

Keywords: Intellectual property, IP, Trademark, Infringement, Ninth Circuit, Lanham Act, Likelihood of confusion, Sleekcraft, Yuga Labs, Bored Ape Yacht Club, Ryder Ripps, NFT, blockchain

JEL Classification: k11, k10, k19, k20, k29, k30, k39