Summarize

Artistic creation is usually considered to be protected by copyright, but what are the other protection mechanisms? Do they really serve the need? Our permanent author Maria Boicova-Wynants is looking for an answer on the example of Banksy's experience

Maria Boicova-Wynants,

European Trademark Attorney, Mediator, Partner at Starks IP and International Trade Law firm

Belgium

Copyright might be for Losers; though Trademarks are for Sellers.

Technically speaking, the “Banksy’s trademarks’”-story is not over, however, in the light of the series of recent decisions of the Cancellation Division of the European Union Intellectual Property Office (EUIPO), their fate seems to be predefined. At least for the seven of them and at least for now.

The name Banksy - this notorious street artist from Bristol - does not seize to hit the news: be it with his graffiti’s appearing over night on a wall somewhere in the world, or with the unexpected artwork shredding he pulled off during the auction*, or recently — also with the ongoing legal battle over his trademarks.

In this article, I do not intend to discuss Banksy’s oeuvre or his publicity stunts in general, though specifically address the latter point, namely the so-called “Banksy’s trademarks”. In particular, I would like to discuss his trademark cancellations and the consequences of them, if any, on the relationship of street artists with the intellectual property law, or better — with the trademark law. 

“Banksy’s Trademarks’” Cancellations

Banksy is known for his pejorative comments about copyright (many know his famous quote: “Copyright is for losers”), and yet through his authentication body - Pest Control Office Limited - he has opted to employ another intellectual property protection mechanism. In the period between 2014 and 2018, he has applied for 18 trademarks in the European Union (EUTMs). Seven of them were targeted by the cancellation proceedings, eleven others are registered and currently valid.

To elaborate on the “currently”: the trademark cancellation proceedings are not initiated by the office ex officio, someone has to effectively file for cancellation. And this was, as mentioned, exactly what has happened in connection with the seven of his trademarks:

“Flower Thrower” (x 2), “Laugh Now”, “Radar Rat”, “Nola”, “Love Rat” and “Bomb Hugger”.

For the first six (except the second “Flower Thrower” trademark) the decisions have already been issued. For the second “Flower Thrower" the cancellation proceedings are ongoing at the moment with the next deadline being October 02, 2021, for providing observations. Yet, given that the first six decisions were basically mirroring each other, there is little hope that the seventh will be decided distinctly different.

In the table below, I sum up some bibliographical and some descriptive data on the seven trademarks in question. To note that all of them are purely figurative trademarks, there are no word elements included; thus the titles are merely descriptive of the images, referring to the particular corresponding artwork of Banksy.

All of the artworks the above trademarks were based upon are the so-called “iconic Banksy” — undoubtedly identifiable as his. Except that, legally speaking the fact of Banksy’s copyright in them cannot be established. This was also one of the points the Cancellation Division of the EUIPO has stressed, namely:

            “the evidence is not exhaustive in this regard as the identity of Banksy cannot be legally determined”.

The trademarks were applied for a big range of goods and services, such as: sunglasses, downloadable image files, covers and cases for mobile phones, posters, books, figurines, calendars, clothing, footwear, games, decorations for Christmas, cultural activities, workshops, lectures, festivals, mural art painting services and many more. Both “Flower Thrower” trademarks were additionally applied for paints for sale in aerosol containers, handbags, statues and sculptures, wall hangings, rugs, commissioned artist’s services, artwork design, art exhibitions and others. All of the above goods and services would have made sense to be actually offered by an artist; or a company representing his interests. However, the reality was different.

The Applicant and Grounds for Cancellation

It has been the UK greeting cards’ company — Full Colour Black Limited — who was the Applicant initiating trademark cancellation proceedings against Banksy. By their own assertion, Full Colour Black is a “contemporary art licensing company specialising in the commercialisation of world-famous street art”. Well, Banksy mostly. Their main product line is about a dozen greeting cards based on Banksy’s artworks. So they would obviously not want Banksy to have any legal basis to act against them.

The grounds for cancellation were several:

1. The first one, and the only one in respect of which the EUIPO in fact has ruled, is Article 59(1)(b) of the European Union Trademark Regulation (EUTMR).
   • The text of the said Article provides: “An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings <…> (b) where the applicant was acting in bad faith when he filed the application for the trade mark.”
2. The second ground for cancellation used has been Article 59(1)(a) EUTMR in connection with Articles 7(1)(b) and 7(1)(c) EUTMR. Therefore, claiming that the trademarks of Banksy are:
   • “(b) trade marks which are devoid of any distinctive character;” and
   • “(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”; hence “trade mark shall be declared invalid”.

As mentioned, the EUIPO in their decisions examined only the first ground (Art. 59(1)(b)) and did not comment upon the second ground, since, quote:

            “as the application is fully successful as based on the ground of bad faith under Article 59(1)(b) EUTMR, the Cancellation Division will not examine the request based on these additional grounds or the arguments and evidence submitted in relation thereto, as said examination will not affect the outcome of the present decision”.

In other words, it was simply procedurally redundant. The six trademarks were declared invalid in their entirety based on the ground of bad faith (for the seventh, as said before, the registration cancellation proceedings are currently ongoing).

The bad faith

The concept of bad faith became the cornerstone of this case (or better - series of cases). It is an interesting one, as EU Trademark law does not contain a precise definition of the term “bad faith”. Even more, bad faith is not only not defined, it is neither delimited nor described in any way in the EU legislation. Therefore, there is only a body of case law to fall upon, with the caveat that the case law in civil law countries (i.e. France, Belgium, Germany, etc.) does not have the same value as case law in common law countries (i.e. the UK, the US, etc.).

The frequently cited opinion of Advocate General Sharpston in case C-529/07 Lindt Goldhase proposes to define bad faith as:

            “a conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices”.

Not that this adds much clarity to the understanding of the concept, yet provides some sort of an entry point. This definition was also repeatedly cited in the Cancellation Division’s decisions in Banksy’s cases. Also out of the said decisions, the bad faith is subject to:

1. first of all, clearly establishing a dishonest intention in the action of the EUTM proprietor, and
2. second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith.

Starting with the second, the purpose of a trademark could be such an objective standard to measure the intention against. A trademark is supposed to allow consumers to identify the commercial origin of the goods or services in question and to distinguish these goods or services from those of other companies.

The application for cancellation has noted that the sole purpose of registering the series of trademarks by Banksy was to “prevent the ongoing use of the work which he had already permitted to be reproduced”, and this was in fact one of the main arguments. Banksy assumedly already from as early as 2007 was fully aware that his works were being reproduced on a massive scale without any of it being under his control. Even more, he has actually allowed and encouraged the use of his artworks. Therefore, one might (and did) conclude that these artworks could no longer serve the purpose of a trademark. If the consumers would not be able to identify the origin of goods or services in question, these signs could also not be registered as trademarks.

But about the intention?

One could have tried to argue that business and individual are legally not the same; consequently, also their intentions, should not be judged as being the same. Pest Control Office Limited has tried using this argument, claiming that it is a common practice for artists and companies to register their artwork as trademarks for use and protection for commercial properties. Moreover, given that Banksy as a person and Pest Control Office Limited as a legal entity are distinct, the opinions of Banksy cannot harm or even show the position of the business. This argument has been rejected by the EUIPO, which concluded that Pest Control Office Limited was rather acting as a representative or agent of Banksy. In other words, it is Banksy’s intentions that need to be evaluated here. And what about Banksy?.. He said it all himself.

Banksy seemed not to have intended to use these trademarks in respect of the actual goods and services. His “Gross Domestic Product” store was not meant as a real store in the first place. It was rather a shop where the “public could look at the window displays and buy the products online”.

Remarkable about this art installation (as that is what this shop essentially was), were the comments of Banksy.

This quote of his

• “for the past few months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law” —

hit yet another nail in the coffin of his trademark plans.

The EUIPO echoed the conclusion in the earlier case before the Court of Justice of the European Union (C-371/18; Sky and Others versus Skykick UK), that:

• “the filing of a trademark without any intention to use it constitutes an act of bad faith”.

Issues and questions

What are the issues here? Why trademarks? Why cannot Banksy rely on copyright, if he wanted to (despite all his reluctance to do so)?

In brief, because he can’t.

To begin with, only Banksy could claim copyright in Banksy’s works. Yet, no one knows for sure who Banksy is, not even whether Banksy is one person — the street-artist from Bristol — or there are many street artists working collectively under this pseudonym. There are speculations, but no one knows for the fact.

Moreover, street art as such is on many counts illegal. True, some of Banksy’s works have been commissioned. Then again, the majority were just made, and made on the property belonging to someone else. Here again, having Banksy on the wall, of course, does not reduce the value of a property, quite the opposite — enhances it. Nevertheless, the very fact of placing his art on the wall he does not own, remains an illegal act.

Finally, his artworks were made in a public place, “free to be photographed by the general public” and “disseminated widely”. That does not mean that anyone else is entitled to claim authorship to them, or alter them, yet “free to be disseminated” is in a way a carte-blanche for any use. Also for commercial.

Put differently, street artists have to choose between revealing their identity and potentially facing criminal (or at least administrative) charges and protecting their copyright. This is not a straightforward decision. One cannot forget that the very fact of anonymity also adds special appeal to the elusive street artist. Should this anonymity cease to exist, its added value could also disappear. So, not an easy choice.

On the other hand, there are trademarks. Copyright and trademark rights are not mutually exclusive by definition, they are two distinct types of rights that can be efficiently used in conjunction. Though, of course, that should be consistent with honest commercial practices.

The very idea of extending the life of copyright by applying for trademarks is a tricky one. Copyright is time-limited (generally, the life of its creator plus 70 years), while trademarks, if duly renewed every ten years, can become virtually eternal. Would trademarks then monopolise artworks in a way? And would it then still be an acceptable legal protection mechanism for the artists to use?

The answer, like with many legal questions, is: it depends.

Trademarks are not simply intangible assets, they are commercial in their nature, linked to very specific goods and/or services and valid on a very specific territory. One cannot get a worldwide trademark in respect of everything. That runs against trademark’s purpose.

That being said, if no use in respect of particular goods and/or services is planned, then there is no point in getting a trademark, nor there is a valid ground for doing so. On the other hand, if an artist is planning on using a particular artwork as a trademark to further offer goods or services under it, there should be no impediment to such registration.

Has Banksy ever planned on commercialisation? We do not know. However, that would not be unimaginable. For example, the “Flower Thrower” has been applied for, amongst others, such goods as: paints, sunglasses, clothing, art exhibitions, artwork design. It would not be improbable that Pest Control Office Limited would one day be producing any of these goods or delivering any of these services. Then again, previously allowed free use of this artwork would impact its ability to act as a sign meant to distinguish the origin of goods and services. Everyone would know that the artwork is Banksy’s but given the widespread (also commercial) use of his images by others, it would probably not be perceived as indicating that the goods or services in question effectively come from Banksy.

The cancellation decisions were not appealed. Does that mean that Banksy admitted he acted in bad faith when applying for his trademarks? That’s not a given either, as there could have been other considerations not to proceed. However, opening a temporary art installation/shop and bragging about in this way outsmarting the EU trademark system were obvious indications of his bad faith. At the same time, the very fact of applying for trademarks should not be…

After all, even if an artist does not intend to make goods under a trademark, it does not mean that he cannot license them to someone who will. Moreover, the EU trademark system, in contrast to the US, does not require intent to use at the moment of filing. Even more so, in absence of bad faith, non-use as such could be brought up only after five years since an application for a trademark. In other words, even in this case there were some unused counterarguments.

To conclude, in my personal opinion, trademarks remain the acceptable legal protection mechanism to be be used by artists, also by street art artists, provided that s/he actually intends to offer goods and/or services under these trademarks, as well as bearing in mind that trademarks will only have a very specific scope of protection.

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* By the way, that shredded artwork, renamed: “Love is in the Bin”, will be auctioned again at Sotheby’s London on the 14th of October, in case you are wondering how to spend your 4-6 million pounds (artwork’s estimate).