In this episode of The Legit Ledger, Sheppard Mullin attorneys Jim Gatto and Gabe Khoury discuss licensing considerations for NFT owners and creators, including the range of licenses creators are using, the recent trend toward more commercial NFT licenses, and practical considerations to keep in mind when drafting an NFT license with commercial rights. 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 Gabe Khoury

Gabe Khoury is an associate with the Corporate Group in Sheppard Mullin's Washington, D.C. office. As Lead Associate of the Blockchain and Digital Assets team, he handles regulatory compliance issues relating to the use of blockchain technology, social media, Web3.0, video games, online gambling, virtual goods and currency, social tokens, decentralized autonomous organizations, decentralized exchanges, cybersecurity, privacy, Esports, the metaverse, money transmission, financial technologies, NFTs, and artificial intelligence. Gabe holds certifications in NFT technology, Metaverse Technologies, and Blockchain Law from the Blockchain Council.

What We Discussed in This Episode:

• The various types of NFT licenses
• Why have we recently seen a trend toward more commercial NFT licenses?
• Has there been any commercial NFT licenses by brands or IP owners?
• What are some well-known examples that have involved the granting of a commercial license?
• What are some of the other ways NFT owners are leveraging commercial licenses?
• How might an NFT creator benefit from granting broad rights in a commercial license?
• How might an NFT owner benefit from granting broad rights in a commercial license?
• What are some of the practical considerations NFT creators should think about when drafting a license with commercial rights?

Resources Mentioned

• Tokenization and the Law
• NFTs and Intellectual Property: What IP Owners and NFT Creators Need to Know
• Protecting IP and Limiting Liability When Licensing IP for Digital Art and NFTs

Contact Information:

James G.Gatto

Gabe Khoury