“MAY RESULT IN LEGAL ACTION” ©TM : THE NEW BANKSY?

Posted on: November 21, 2019 by

Banksy’s well-known quip from 2005 that “Copyright is for losers ©TM” is perhaps more widely attributed than many of his artworks.  Disputes with an Italian museum and a UK greetings card company over the past year suggest a shift, however, in his historically laissez-faire attitude to the commercialisation of his work by unauthorised third parties.  Whilst copyright would present a number of practical obstacles for Banksy today, his attempts to rein-in such use via the trade mark regime have provoked vocal accusations of hypocrisy, selling-out and abuse of the trade mark system to protect his anonymity.

In August 2018, Banksy took to social media to denounce the proliferation of exhibitions of his artwork, leant by private individuals, which use the Banksy name but are “organised entirely without the artist’s knowledge or involvement”.[1]  His website listed 24 “FAKE” exhibitions and their admission fees ranging from $6 to $49. Amsterdam’s MOCO Museum ($15) has run its Banksy exhibition continuously since it opened in March 2016, attracting 550,000 visitors in 2018 and becoming one of Holland’s most popular museums.[2]

Pest Control Office Limited[3] (Banksy’s principal corporate vehicle) was contacted in July 2018 by the curator of “The art of Banksy: A visual protest”, scheduled to run at Milan’s MUDEC Museum from November 2018 to April 2019.[4]  Pest Control said the exhibition was not authorised and warned it would file proceedings if its three registered EU trade marks (in the BANKSY name[5], Girl with Balloon motif[6] and Flower Thrower motif[7] – all registered by the EU Intellectual Property Office in August 2014) were infringed on merchandising, promotional materials or catalogues.  Pest Control considered the organiser’s marketing gave undue prominence to its trade marks (see below, left), suggesting a commercial link between the parties, and filed proceedings before the Milan Courts.

In a considered decision rendered on 14 January 2019 which split costs between the parties, the Milan judge upheld the organiser’s right to use the BANKSY name on promotional materials as “normal industry practice” necessary to describe the exhibition’s content, and highlighted that the scope of rights in the artworks transferred by Banksy to Pest Control “remained substantially undetermined”.[8]  Significantly, however, the judge held that MUDEC’s use of the Banksy name and registered artworks on a range of “entirely generic and commonly consumed products” such as diaries, notebooks, postcards and erasers was unlawful, since the trade marks alone gave the merchandise their “distinctive aspect”.  The judge accordingly blocked further sales of offending merchandise, and MUDEC changed its graphics (see above, right).  The merchandise aspect of the decision was a shot across the bow for EU businesses selling generic merchandise featuring the Banksy name or registered artwork.  Pest Control filed to add a further 11 of Banksy’s art works – including the iconic Gangsta Rat – to its roster of EU Trade Marks in November 2018, which were registered in June 2019.[9]

In March 2019, a UK company called Full Colour Black Limited (FCB) filed with the EU IPO an Application to Invalidate Banksy’s EU Flower Thrower trade mark[10], shown below, which had first appeared in the West Bank in 2003:

FCB sell greeting cards online featuring Banksy graffiti, duly attributed, so may have seen the writing on the wall (pun intended).[11]  Their application was eventually accepted by the EU IPO and notified to Pest Control on 18 June 2019.[12]  FCB imply that Banksy’s famous copyright quip constituted tacit permission for the widespread reproduction of his artwork, including the Flower Thrower motif, by third parties such that the mark was not distinctive when Pest Control applied for registration in 2014.  They allege Pest Control registered the mark in bad faith and argue the mark fails to function as an indicator of trade origin since no reasonable person would think that goods bearing the motif have been endorsed or licensed by Banksy.

Pest Control responded to the EU IPO on 25 October 2019.[13]  Whilst acknowledging that Banksy has previously authorised non-commercial use of some of his works, they argue that neither they nor Banksy have ever permitted use of the Flower Thrower mark and reject the suggestion that Banksy’s “Copyright is for losers” quip constituted a general permission: “Banksy’s statements neither change the law nor prohibit him or [Pest Control] from seeking rights and protections available under the law. An anti-establishment viewpoint does not prevent a party from utilising establishment mechanisms in order to further their view.”[14]  Pest Control add that Banksy’s rights under Article 11(1) of the EU Charter of Fundamental Rights[15] to hold opinions and impart information and ideas without interference by public authority would be breached if he is prohibited from obtaining (or loses) trade mark protection for his work based on an “ironic comment”.

Banksy publicised FCB’s application on 1st October 2019: “A greetings card company is contesting the trademark I hold to my art, and attempting to take custody of my name so they can sell their fake Banksy merchandise legally.  I think they’re banking on the idea I won’t show up in court to defend myself.[16]  This prompted a strongly worded public statement from FCB denying attempting to “take custody” of the Banksy name and challenging the artist to “tell the truth”.[17]  Banksy announced the launch of a new online homewares store called Gross Domestic Product selling an eclectic mix of Banksy-branded goods.[18]  Sales were not first come, first served, however:  Applicants were asked to register for just one item, and answer the tie-breaker question “Does art matter?”.  Winning responses were chosen by a judge who “is impartial and independent, and… a professional stand up comedian.[19]  The GDP website stressed that whilst Banksy continues to encourage the non-commercial copying of his work, “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.”[20]

FCB’s application to invalidate Banksy’s Flower Thrower mark is rather curious on its face.  Why would a small company poke the bear?  FCB’s application provides a clue: They applied to invalidate Pest Control’s UK registration for the word mark “BANKSY” in 2012, so had already been on the Banksy radar for over 7 years.  Their 2012 targeting of the word mark may also explain Banksy’s comment last month – which did not follow from the 2019 application alone – that FCB are “attempting to take custody of my name”.

Having applied to invalidate Banksy’s UK word mark on 6 February 2012, UK IPO records indicate that FCB withdrew their application on 20 August 2012.[21]  No information is available regarding the application or FCB’s reasons for withdrawal.  Whilst FCB is today wholly owned by Mr Andrew Gallagher who is also sole director, the business was started in 2007 by Mr Gallagher and Mr Alan Rowe who held equal shares until 6 September 2012, when Mr Rowe left the business.[22]  Prior to his exit, Mr Rowe incorporated his own company on 19 March 2012.[23]  Companies House records show that a loan which FCB secured over its assets in November 2010 was repaid in full in December 2012[24] and no further debts have been registered since.

Companies House filings show that the Banksy team incorporated a new UK company whilst FCB’s 2012 application was pending.  What was the name given to that company, in June 2012?  Gross Domestic Product Limited.[25]  The Banksy team tends to incorporate new vehicles with a specific project in mind[26].  Could the recently launched GDP homewares concept have been conceived over 7 years ago, in response to the first FCB application?  Records at the UK IPO also show that in February 2019, Pest Control surrendered two of the 20 categories for which the “BANKSY” UK mark was originally registered.[27]  Although it is unclear which categories were surrendered, it seems the BANKSY trade mark house was being put in order before FCB’s application to the EU IPO in March 2019.

Looking forward, FCB now have until 8 January 2020 to respond to Pest Control’s submissions, and the online Banksy store has allocated the first batch of available goods with an assurance that “there will be plenty more opportunities to purchase products in the coming months”.[28]  EU Regulation 2017/1001 on the EU Trade Mark[29] (EUTMR) is explicit that the monopoly rights afforded to a registered holder under Article 9(2) EUTMR will not be protected unless the mark is put to genuine commercial use within 5 years of registration.[30]  The Flower Thrower mark was registered on 29 August 2014 and Banksy announced the launch of his store on 1 October 2019.  The EU IPO is not an enforcement agency, however, and only responds to formal third party applications.[31]  Just as the onus is on the mark holder to enforce its rights against infringing parties (as Pest Control did, invoking Article 9(2) EUTMR, against MUDEC), it is for third parties to petition the EU IPO to either “invalidate” a mark (arguing it should not have been granted in the first place based on “absolute” grounds under Article 59 EUTMR) or “revoke” the mark (following 5 years of non-use under Article 58 EUTMR).  FCB’s application asks the EU IPO to invalidate the Flower Thrower mark alleging, inter alia, lack of distinctive quality and Pest Control’s bad faith (notoriously difficult to prove).  It does not seek to revoke for non-use, which would arguably have been easier to establish if FCB had waited until the 5th anniversary of the mark’s registration (29 August 2019).  Pest Control have noted in their submissions that Article 95 EUTMR prevents the EU IPO from extending its review beyond “the grounds and arguments submitted by the parties”(i.e. having not raised it initially, query whether FCB have not lost the right to invoke Pest Control’s lack of use).  Banksy’s confession that goods were conceived “for the sole purpose of fulfilling trademark categories under EU law… not a very sexy muse”[32] has nevertheless sparked a heated debate around the requirement of “genuine” use and it will be interesting to see whether FCB take this up in their next submissions.[33]

Pest Control’s trade mark will remain in force pending resolution of FCB’s application by the EU IPO.  If FCB’s invalidity application were successful, the mark would be removed from the EU Register of trade marks with retroactive effect[34] and may be vulnerable to registration by a third party.  Readers may recall the dispute regarding registration of the Keep Calm and Carry On mark before the EU IPO in this respect.  Pest Control seems alert to this risk, however: Presumably to protect its priority in the event of invalidation, it filed an application with the EU IPO on 30 August 2019 to (re-) register the identical Flower Thrower mark for the same categories of goods and services.[35]

[1] https://www.banksy.co.uk/shows.asp

[2] https://mocomuseum.com/press-releases/

[3] https://beta.companieshouse.gov.uk/company/06472402

[4] https://www.mudec.it/eng/the-art-of-banksy-a-visual-protest/

[5] https://euipo.europa.eu/eSearch/#details/trademarks/012575114

[6] https://euipo.europa.eu/eSearch/#details/trademarks/012575189

[7] https://euipo.europa.eu/eSearch/#details/trademarks/012575155

[8] Milan decision available at: http://ipkitten.blogspot.com/2019/03/milan-court-sides-with-banksy-in.html

[9] https://euipo.europa.eu/eSearch/#details/owners/618285

[10] https://euipo.europa.eu/eSearch/#details/trademarks/012575155

[11] https://fullcolourblack.com

[12] FCB’s application can be downloaded under “Correspondence”: https://euipo.europa.eu/eSearch/#details/trademarks/012575155

[13] See “Correspondence”: https://euipo.europa.eu/eSearch/#details/trademarks/012575155

[14] Pest Control submissions, Para 26.

[15] https://fra.europa.eu/en/charterpedia/article/11-freedom-expression-and-information

[16] https://www.theguardian.com/artanddesign/2019/oct/01/banksy-launches-homewares-shop-in-dispute-over-trademark

[17] https://www.facebook.com/notes/full-colour-black/public-statement-release/2557627524344258/

[18] https://grossdomesticproduct.com

[19] https://shop.grossdomesticproduct.com/pages/terms-conditions

[20] https://shop.grossdomesticproduct.com/pages/legal

[21] https://www.ipo.gov.uk/trademark/history/GB50000000002457210.pdf

[22] https://beta.companieshouse.gov.uk/company/06368215/filing-history

[23] https://beta.companieshouse.gov.uk/company/07995478

[24] https://beta.companieshouse.gov.uk/company/06368215/filing-history

[25] https://beta.companieshouse.gov.uk/company/08120840

[26] Dismaland Limited was incorporated in May 2015, ahead of the park’s operation in August/September 2015 (https://beta.companieshouse.gov.uk/company/09572022); and Paranoid Pictures Film Company Limited was incorporated in mid-2008 shortly before production of Exit Through the Giftshop began and ahead of release early 2010 (https://beta.companieshouse.gov.uk/company/06641316).

[27] https://trademarks.ipo.gov.uk/ipo-tmcase/page/History/1/UK00002457210

[28] https://grossdomesticproduct.com/info.html

[29] https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32017R1001

[30] See Recital 24 and Article 18.

[31] https://euipo.europa.eu/ohimportal/en/looking-after-your-rights

[32] https://www.theguardian.com/artanddesign/2019/oct/01/banksy-launches-homewares-shop-in-dispute-over-trademark

[33] https://qz.com/quartzy/1726408/banksys-trademark-dispute-with-full-colour-black-could-backfire/

[34] https://euipo.europa.eu/ohimportal/en/looking-after-your-rights

[35] https://euipo.europa.eu/eSearch/#details/trademarks/018118853