When the creator gave me “the non-exclusive right to use the underlying IP”, can I enforce the rights against unlicensed use?
Under Italian law, the non-exclusive licensee is not entitled to directly enforce his rights unless he does it along with the IP owner or it is expressly empowered to do it against an identified unauthorized use.
A non-exclusive licensee can enforce the licensed rights against a third party before a French Court,
either with the licensor or with his authorization, and for industrial property rights, if the licensed
was published in the relevant register.
The French Intellectual Property Code expressly grants the right to introduce infringement actions to
the exclusive licensee of certain types of intellectual property rights (including rights related to the
production of phonograms or videograms, designs and models and trademarks). Although this right
is not set in the IP Code for licensees of copyrighted works, the case law goes in the same direction.
The French Intellectual Property Code expressly grants to non-exclusive licensees the right to
participate to infringement actions introduced by licensor, based on designs and models and
trademarks; for trademarks, the non-exclusive licensee can also introduce an action with the
agreement of the licensor. Although this right is not set in the IP Code for licensees of copyrighted
works, the case law goes in the same direction.
In the case of NFTs, this possibility seems theoretical since there are additional conditions that are
required to enable the introduction or participation by the non-exclusive licensee to an infringement
action against an unlicensed use of the IP associated to the NFT:
• First, the terms of the license agreement must be clear and enforceable against third parties;
• Second, the NFT owner needs the licensor, either to introduce the action or to agree expressly
that it introduces the action;
• Third, depending on the IP rights at stake, and specifically for registered industrial property
rights, the license agreement has to be registered within the relevant IP register to be
opposable to third parties.
Of course, the above-mentioned legal conditions have to be analyzed in combination with any
provision related to right to action within the applicable license agreement.