By Isabella Rivera.

The provocative artist by the pseudonym of “Banksy” has been known for provocative and politically-driven sardonic street art since the 1990s.[1] The artist has been making headlines with artworks such as the “Balloon Girl” which self-destructed after fetching $1.4 at Sotheby’s in 2019[2] and the 2020 pink refugee rescue boat, Louise Michel. Inspired by Banksy’s fame, many vendors have tried to copy Banksy, including a London-based greeting card company, Full Colour Black, Ltd. (“FCB”). After two years of battle, a panel of European Union Intellectual Property Office (“EUIPO”) judges resolved the trademark dispute in favor of the card company.[3]

On July 2, 2014, Banksy, through his company and “Parent/Legal Guardian for the artist Banksy” Pest Control,[4] sought to register a European Union Trade Mark (“EUTM”) over many of his iconic designs, including the “Flower Thrower”, in an attempt to safeguard his intellectual property and resulting in the registration of 14 marks. In 2019, FCB, a UK greeting card and stationery products company, began selling greeting cards featuring Banksy’s “Flower Thrower” and, later that year, filed a trademark opposition before the EUIPO arguing that Banksy’s filing for trademark registration should be void due to the lack of proper trade use. In response, to insure that all “services and goods” bearing Banksy’s registered marks be associated with his name and to protect his goodwill, Banksy unveiled a brick-and-mortar pop up store in Croydon, UK, called Gross Domestic Product, along with an online site. FCB used Banksy’s last-minute attempts to validate his registration to argue that he has not made any prior use in commerce and that he was only avoiding to lose the trademark, to which the EUIPO opined.[5]

Registering a Trademark Under European Law

By definition, the European Union recognizes a trademark to be any sign used within trade to identify a specific product(s) which distinguishes one from one’s competitor.[6] A trademark registered by any individual must be distinguishable from other competitors to acquire protections and be clearly defined and used in trade. Registration also requires an enumeration of type of goods or services to be sold under the mark, know as a “class.”[7] The owner of a trademark has the right to take legal action in protecting the work(s)/marks/signs against counterfeiting, fraud, and usage without permission.[8] In addition, registering for a trademark enables the rights holder to sell or license the brand, include the ® symbol to alert its holding status, and otherwise monetize their intellectual property.[9]

After a full review and examination of the application, the EUTM allows opposition parties to come forward and requests that the trademark be used for five years after the date of filing. Once the final approval is received, an EUTM is valid for ten years, for which can be indefinitely renewed ten years at a time by the original applicant.

Banksy’ Mark Gets Canceled

On July 2, 2014, Banksy filed a trademark under the EUTM to protect the rights of his famous signs, including the “Flower Thrower,” a street graffiti which he first unveiled in Jerusalem in 2005. Banksy sought trademark registration for a particular set of classes, including:

  • Class 2: in relation to paints, varnishes, lacquers;
  • Class 9: sunglasses and other objects;
  • Class 16: printed matter; and
  • Class 42: artwork design.

Based on EUIPO’s standards, it takes from two to five months to complete the process of registration for a trademark.[10] From examination and application review, to opposition of existing mark claims, and the final registration steps, the trademark will then be accepted and published in 23 EU official languages.[11] Banksy’s EUTM was just around the corner of having the chance to renew when FCB opposed and claimed for invalidity. The normal opposing phase of the EUTM process can be filed three months after the trademark has been published.[12] Nevertheless, any third party who considers the mark should have not been accepted in the first place, can invoke for “absolute ground” and communicate with the EUIPO.[13]

However, in 2019, FCB opposed the mark in order to prevent Banksy from owning a monopoly on a mark he has never used to sell goods or services. The EUIPO eventually agreed with FCB, using Banksy’s apparent “bad faith” against him.

A history of “laissez-faire”

FCB first acknowledged that they reproduced an exact work of Banksy’s famous “Flower Thrower” image but argued that its maker (Banksy) never made use of the mark with the exception of its original artistic creation until recent commencement of legal claims against his mark. The panel of judges conceded that Banksy had no intention of enforcing the trademark rights on numerous past third-parties that did reproduce his work as merchandise and graphic works. Banksy was aware of such “media carriers” but did not take measures to preclude until recent developments.[14]

Bad faith in registering the trademark?

Second, FCB argued that graffiti being a work of public art, Banksy permitted dissemination of his work and even provided versions of his work to download publicly by third-parties in a massive range of without any commercial connection to him. In addition, Banksy priorly wrote that “copyright is for losers” and for which he vocally expressed how, on the contrary to this case, copyright law was a form of censorship towards the general public and their rights to reproduce freely.[15] All of which does not favor Banksy’s case against Full Colour Black.

Under Use of Images, Pest Control’s website states:

You are welcome to use Banksy’s images for non-commercial, personal amusement. Print them out in a colour that matches your curtains, make a card for your gran, submit them as your own homework, whatever.

But neither Banksy or Pest Control licence the artist’s images to third parties. Please do not use Banksy’s images for any commercial purpose, including launching a range of merchandise or tricking people into thinking something is made or endorsed by the artist when it isn’t. Saying “Banksy wrote copyright is for losers in his book” doesn’t give you free rein to misrepresent the artist and commit fraud. We checked.[16]

Further, it is noteworthy that Banky’s own Gross Domestic Product website asserts the trademark to Banksy’s name and images is “held by the artist, and is not transferable to any third-party.”[17] However, it also states that:

The artist would like to make it clear that he continues to encourage the copying, borrowing and uncredited use of his imagery for amusement, activism and education purposes. Feel free to make merch for your own personal entertainment and non-profit activism for good causes. However, selling reproductions, creating your own line of merchandise and fraudulently misrepresenting knock off Banksy products as ‘official’ is illegal, obviously a bit wrong and may result in legal action. In the event of prosecution all funds will be donated to charity.[18]

Based on the opinion in Sky v. Skykick on July 22, 2019, the intention to obtain a trademark for collateral benefit of trade as an abuse of the system is “an act of bad faith” for which a trademark can be canceled.[19] The court did not appreciate the fact that Banksy clearly attempted to protect his work despite strong allegations that deemed permission of reproductions to third parties in the past. In brief, the court expressed how much of the evidence presented that registering at the EUTM was a way for Banksy to circumvent copyright and trademark law, and therefore, his attempt failed to validate the trademark registration to protect his works. The EUTM claimed that Banksy’s “inability to rely upon other appropriate intellectual property rights” was the reason for the final decision to invalidate the mark.[20] Court evidence evidence, including a witness statement, articles showing the relationship between Pest Control and Banksy, as well as Banksy’s own admission showed that he attempted to initiate recent proceedings for opening his Gross Domestic Product shop on a false basis.

In response, Banksy argued that the owner of a mark has the “legitimate objective” to apply without enforcing an unregistered trademark.[21] He also defended his stature by claiming that his “past statements should not change the law or prohibit him to seek and gain the trademark rights and protection as proprietor.”[22] Not to mention that Banksy also voiced consideration under the principles established in Article 20 of the Charter of Fundamental Rights of the European Union, that any individual has equal rights to hold opinions, freely receive and impart information and ideas.[23]

As of September of 2020, the court ruled in favor of FCB by invalidating Banksy’s trademark registration as invoked by the grounds of Article 59 (1)(a) in relation to Articles 7(1)(b) and 7(1)(c) of EUTMR.[24] The decision, based on figurative interpretation, was addressed by the EUIPO years after the artist’s original filing. The EUIPO judges block Banksy’s trademark protections for “Flower Thrower” and potentially puts at risk his portfolio of trademarks and future creations.[25] The declaration upholds full invalidity against the request directed to all goods and services covered by the European Union Trade Mark. In addition, the judges declared an official and full cancelation against his trademark (EUTM no. 12 575 155) because it was “filed in bad faith” and against order to comply with the minimum EU laws.[26]

Final Thoughts and Discussion

As seen with Banksy’s recent unfoldings, individuals and entities may prefer certain laws for protection of their “property”. Whether one determines to file under copyright law or trademark law, there are clear intentions for wanting to file, and there must be “in good faith” to ethically follow those standards. In this very unusual case, people like FCB, can argue that Banksy never really had the intentions to take commercial actions forward of his creations. Nevertheless, acquiring the knowledge of these laws is pivotal for any artist who desires protection for their work. This is why it is important to know the distinction between copyright and trademark law to carry out the responsible and legal processes it requires to stand valid.

To recapitulate, “the purpose of a trademark is to allow customers to identify the commercial origin of the goods or services at issue” and distinguish these from others in the market.[27] As analyzed by the EUIPO judges, when filing a trademark, Banksy does not “by default” prohibit others to use his signs if his application is not used properly.[28] Conversely, if Banksy had filed under copyright, protections of his original works would have been multiple distinct ways. Although Banksy’s representatives had no comments on the aftermath of the case, Liz Ward, a copyright and trademark expert, recently said that “trademark owners register a brand name or logo because they’re going to make it theirs…[and] that’s why trademarks are so valuable. Banksy didn’t create a trademark to make it a business asset.”[29]

Overall, under copyright law, no other individual or entity could potentially reproduce or make the work public. The only problem is that, in this form, Banksy would have had to reveal his true self and legal identity. Intellectual Property lawyer and professor at City University (London, UK) Enrico Bonadio points out that one reason why Banksy may have preferred trademark over copyright protection is because he would actually have the legal requirement of revealing his real identity, which he wants to avoid.[30] Many others also question why Banksy would even bother to seek trademark or copyrightable protections and monopolistic rights when he previously stated before how “copyright is for losers.”[31] This is something that an artist thriving on their mysterious and appealing anonymity would not want to surrender, not even for a greeting card company. Although, there is a chance that if Banksy would continue to search legal protection for his original works, copyright would be desolating for a career of his reputation and status because he would, in theory, have to “come out” to the world.

Lastly, as of November of 2020, Banksy’s current Gross Domestic Product website still indicates registration for his EU trademark on specific logos and copyright. It mentions that “some” of the images being used on the products are retained by the creator and used with his permission.[32] The website’s legal terms assert that he currently denies the use of third parties’ usage of his works, with the exception of third parties copying and profiting from his work. Now, understanding trademark and copyright within the EU laws may be quite different from the UK and US, but it is clear that following registration requirements is essential for any registration of similar nature. For many, this case underscores more than just the importance of choosing between registering for trademark or copyright; knowing the difference between these laws; registering with the appropriate intentions as set by the laws; and being consistent in executing within the country’s or union’s protections and principles it reigns.

Many have criticized the case for the fact that Bansky’s worldwide reputation became a prominent factor in the determining factor of “bad faith” and subsequent invalidation. Banksy’s history of quasi-anti social and political activities along with his public ridicule towards the law, has earned him a critical perspective towards artists representation in the law and how their reputation impacts their ordeals. Will future artists like Banksy suffer through similar consequences? Would have Banksy won the case if he had registered elsewhere?


Endnotes:

  1. Will Ellsworth-Jones, The Story Behind Banksy, Smithsonian Magazine (Feb. 2013).
  2. Scott Reyburn, Banksy Painting Self-Destructs After Fetching $1.4 Million at Sotheby’s, N.Y. Times (Oct. 6, 2016).
  3. Full Colour Black Ltd. v. Pest Control Office Ltd., No. 33 843 C, 5 (EUIPO, September 14, 2020).
  4. Pest Control Office, accessed November 2020.
  5. Bruce Bernam, Trademarks are for Sellers: Banksy Store Created for Trademark Defense Fails to Protect ‘Flower Thrower’, IPWatchdog (Oct. 20, 2020).
  6. EUIPO, Mark Definition, accessed October 2020.
  7. Id.
  8. EUIPO, Trade Marks, accessed October 2020.
  9. Id.
  10. EUIPO, Registration Process, accessed November 2020.
  11. Id.
  12. Id.
  13. Id.
  14. Full Colour Black Ltd. v. Pest Control Office Ltd., No. 33 843 C, 5, 2 (EUIPO, September 14, 2020).
  15. Id.
  16. Pest Control Office, Use of Images, accessed November 2020.
  17. Gross Domestic Product, Legal, accessed November 2020.
  18. Id.
  19. Sky Plc & Ors v Skykick UK ltd & Anor [2018] EWHC (Ch) 155 (Eng.).
  20. Full Colour Black Ltd. v. Pest Control Office Ltd., No. 33 843 C, 3, 5 (EUIPO, September 14, 2020).
  21. Full Colour Black, 12.
  22. Id.
  23. Full Colour Black, 9.
  24. Full Colour Black, 7.
  25. Id.
  26. Full Colour Black, 15.
  27. Full Colour Black Ltd., 8.
  28. Id.
  29. Banksy loses battle with greetings card firm over ‘flower bomber’ trademark, BBC News, (Sept. 17, 2020).
  30. Enrico Bonadio, Banksy’s trademark battle exposes a huge hypocrisy in his anti-copyright views, Quartz (Oct. 11, 2019).
  31. Id.
  32. Gross Domestic Product, Legal, accessed November 2020.

About the Author: Isabella Rivera is a Fall 2020 graduate intern. She graduated from the University of Puerto Rico at Mayagüez in 2018 and majored in business and art. She is currently pursuing a Master’s degree in Arts Administration at Teachers College, Columbia University.

Disclaimer: This article is for educational purposes only and is not meant to provide legal advice. Readers should not construe or rely on any comment or statement in this article as legal advice. Opinions expressed here are those of the author.