Banksy: the Anonymous Street Artist Who Loses His Trademarks

Banksy: the Anonymous Street Artist Who Loses His Trademarks

Banksy is a well-known, yet anonymous, British street artist who claimed for a long time that he would not be opposed to the reproduction of his work and that “[c]opyright is for losers”.^[1] While copyright law allows Banksy, in theory, to oppose the unauthorized commercial exploitation of his works, bringing an action would require Banksy’s true identity to be revealed.^[2] It seems like he recently changed his mind and that in order to assert his rights and to penalize the unauthorized commercial use of his works, the artist has resorted to trademark law instead of copyright.^[3]

Several decisions rendered by the European Union Intellectual Property Office (“EUIPO”) raised some interesting questions regarding bad faith trademark applications and the protection of intellectual property rights in the artistic works.^[4]

On February 7, 2014, a reproduction of the work “The Flower Thrower” was filed as a trademark with the EUIPO by the British company Pest Control Office Limited (“PCO”), which was created to represent Banksy’s interests while preserving his anonymity. The trademark was duly registered.^[5] Claiming its trademark rights, Bansky’s company subsequently objected to the unauthorized reproduction by the British company Full Color Black Limited (“FCB”) of Banksy’s works on the postcards it was marketing.^[6]

In 2019, the defendant filed a cancellation action with the EUIPO against Banksy’s trademark, essentially on the ground of bad faith.^[7] It is important to underline that this ground is rarely raised, as it is difficult to demonstrate this element, since there is a presumption of good faith in favor of the applicant.^[8] It should also be recalled that invalidity on the grounds of bad faith implies conduct that deviates from the recognized principles of ethical conduct or honest practices in industrial or commercial matters.^[9] This is the case when, for example, the owner intended to obtain an exclusive right for purposes other than the function of indication of origin, or when the trademark was registered without the intention of exploiting it in accordance with said function.^[10]

To demonstrate bad faith, FCB began by establishing the link between the incumbent company, PCO, and Banksy in order to prove that the alleged infringement could be attributable to Banksy himself and not only to the company. The EUIPO recognized this link and thus affirmed that the statements and behaviors are attributable to Banksy, even though he did not file the trademark himself.^[11] It is important to remember that bad faith is assessed on the day the trademark is filed, and facts prior or subsequent to the filing can be taken into account, as long as they allow to deduce what Banksy’s intention was on the day of filing.^[12]

Moreover, the artist had expressed, publicly and on several occasions, his dislike of intellectual property.^[13] It also appeared from Banksy’s website, in 2011, that he did not approve or profit from the sale of greeting cards, mugs, T-shirts, and other products derived from his works.^[14]These statements were obviously echoed by the defendants and supported their arguments that, even before the filing date, Banksy had no intention of commercially exploiting his work.^[15]

However, Banksy opened a store in London in October 2019 called Gross Domestic Product. This “showcase” store allowed the public to view derivative products, notably reproducing the trademark in question, accompanied by a merchant website allowing the act of purchase.^[16]  Banksy declared that “this venture was motivated by the least poetic reason for making art: a trademark dispute“, and that “in the last few months I have been creating things for the sole purpose of fulfilling the requirements of EU trademark law.“^[17] This position was confirmed by the CEO of PCO, who stated that the offer of derivative products and the opening of the store in question was a response to the obligation of trademark owners to exploit their trademarks.^[18]

The EUIPO considered that the objective elements indicated that Banksy did not intend, on the day of filing, to use the “Flower Bomber” as a trademark.^[19] The Office concluded that it was clear from Banksy’s statements that he filed his mark for the sole purpose of maintaining his exclusive right to exclude third parties. The EUIPO therefore declared the mark invalid.^[20]

Lastly, in May 2021, the EUIPO’s issued another cancellation.^[21] The EUIPO decided to invalidate Banksy’s trademark registration for the image of a monkey wearing a sandwich board. The action was filled by the same plaintiff: Full Color Black.^[22] The Cancellation Division ruled that at the time of applying for the EU trademark, Bansky has no intent to use the trademark, which was considered as bad faith.^[23]

These decisions demonstrate the consequences of a poorly managed communication and how it can lead to the loss of a right as well as the legal effects when an artist wishes to maintain his anonymity.^[24]