“Banksy” the anonymous English street artist is world-renowned for his satirical street-art and take on world events, even opening a hotel in Israel facing onto the West Bank border wall which boasts in typical Banksy fashion of having “the worst view of any hotel in the world”. Banksy has now had a trademark in respect of one of his art pieces cancelled. For an artist who has turned himself into a brand name and whose street art often collects six figures at auction, being bought by notable people such as Brad Pitt and Angelina Jolie who are said to have once purchased a piece for around £1 million, the thought that Banksy is unable to protect intellectual property rights in his works warrants some consideration.
The recent case:
On 14 September 2020, the EU INTELLECTUAL PROPERTY OFFICE (EUIPO) gave its decision on a case between representatives for Banksy and Full Colour Black Ltd (FCB), a greetings card company. The background to the case is that the representative for Banksy (referred to as Banksy for ease) had obtained a series of EU Trademarks (EUTM) for some of Banky’s works, including the “flower bomber”, a well known piece. FCB are a greeting cards company that reproduces street art on cards and related products. FCB applied to invalidate the registration of Banksy’s trademark for the “flower bomber” image, claiming that (1) the mark can’t function as a trade mark because it doesn’t possess distinctive character allowing someone to recognise it as a trade mark and/or it’s descriptive of the goods involved and (2) that the application was filed in bad faith.
The applicant invoked the grounds of bad faith under Article 59(1)(b) EUTMR and also the grounds of Article 59(1)(a) EUTMR in connection with Articles 7(1)(b) and 7(1)(c) EUTMR.
THE APPLICANT CLAIMS THAT “The reproduction is of arguably the most iconic and famous of his works, and it is also a work which has been reproduced by a large number of third parties as decoration for items of merchandise and as the subject matter of “media carriers” such as posters and graphic works. The proprietor has made no use of the mark, its activities preclude such activity and Banksy has only ever reproduced the work as a work of art.
In regards to the ground of bad faith the applicant claims that the work which is the subject matter of the registration is a work of graffiti sprayed in a public place. It was free to be photographed by the public and disseminated widely.
Banksy permitted parties to disseminate his work and even provided high-resolution versions of his work on his website and invited the public to download them and produce their own items.
Banksy does not use any of the images for which registration has been sought, including the mark in suit, as a trademark. The present applications are attempts to monopolise these images on an indefinite basis contrary to provisions of copyright law. Until recently BANKSY has not brought formal proceedings against any parties.”
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 12 575 155 is declared invalid in its entirety.
This article looks into head (2) and further looks into the general question of protecting copyright.
ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR
Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.
There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).
Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37).
The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.
The ground of bad faith applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark filed its application for registration without any intention of using the contested EUTM, or without the aim of engaging fairly in competition, but with the intention of undermining the interests of third parties, in a manner inconsistent with honest practices, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin (12/09/2019, C-104/18 P, STYLO & KOTON (fig.), EU:C:2019:724, § 46 and 29/01/2020,
C 371/18, SKY, EU:C:2020:45, § 81).
The purpose of a trade mark is to allow consumers to identify the commercial origin of the goods or services at issue and distinguish these goods or services from those of other companies. The purpose of a trade mark is not to prohibit others from registering or using signs in order to carve out a portion of the commercial market.
It was found that Banksy had never actually marketed or sold any goods under the contested trademark. Further, it was shown that Banksy had freely encourage the dissemination and publication of the works for others use (it was noted that Banksy’s website contained a caveat to this publication for general use by saying “(non-commercial use only thanks)”. However, even despite this, Banksy had originally placed its artwork on other people’s property which was distributed to the public without conditions.
There was no evidence that Banksy was actually selling anything under the contested trademark, and therefore it could not be said that the mark was being used for a commercial purpose. After FCB had brought its claim, Banksy set up an online e-commerce website called “Gross Domestic Product” to sell products under the contested sign to try to fit with the requirements for a valid trademark, however the EU IPO viewed this as an attempt to circumvent the law and true intention for registering the trademark.
Bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM or if the intention in filing
the EUTM was to obtain an exclusive right for purposes other than those falling within the functions of a trade mark. Therefore, for the reasons given above the EUIPO viewed Banksy’s actions as inconsistent with honest practices as it had no intention to use the EUTM as a trade mark according to its function and thus the EUTM was filed in bad faith.
What about Copyright?
The purpose of a copyright is inter alia to protect different kinds of original artistic works.
A painting or graffiti could therefore, when the necessary conditions are met, be covered by copyright protection.
The Copyright Design and Patent Act 1988 section 1(1)(a) states
(1)Copyright is a property right which subsists in accordance with this Part in the following descriptions of work—
(a)original literary, dramatic, musical or artistic works, […]
Usually, artistic works would fall under copyright, and be the usual method of protection for original works, rather than by trademarking, however even when copyright does exist, as copyright only lasts 70 years, it is becoming common for artists to protect their works by trademark also, which can be renewed indefinitely.
In the present case, the artwork in question of the ‘Flower Thrower’ was a piece of street graffiti placed on a wall on the side of a garage in Jerusalem. As argued by FCB “the work … is… graffiti sprayed in a public place. It was free to be photographed by the public and disseminated widely.” Further EUIPO commented that street graffiti, which is not carried out with the express permission of the owner of the property on which it is placed, is carried out in commission of a criminal act. To such extent, no copyright rights might accrue from such a work. There are public policy principles that one cannot benefit from a wrong.
There is further issue that Banksy is anonymous, meaning it is not possible to prove the original creator of the works.
Banksy had no intention of using the trademark for commercial use and was allowing the public to download and use it as they wished, with the exception of commercial use, but he did not want anyone else to use the sign which is in the public domain and for which no clear copyright can be identified.
The EUIPO did not consider the question of copyright, other than giving comment.
Aside from the finding of bad faith, the case highlights the importance of trademark owners to enforce their rights and ensure that they do not shoot themselves in the foot by allowing third parties to freely use their signs. A trademark owner must be consistent in how they use their trademark and they can lose their protection through actions and if they are seen to impliedly allow third parties to use their signs, then they can lose their rights to stop other third parties from using their sign in the future.
For Banksy it remains to be seen whether this decision will cause a domino effect on all of his other works protected by registration. In particular the recent case highlighted that Banksy had been registering his work for registration with EUIPO under EUTMs, and then registering the same signs in the United States of America IP office, using the existing EU rights as basis for obtaining registration, which has now been called into question.
source: EU IPO CANCELLATION No 33 843 C (INVALIDITY), 14 September 2020.