What has (really) happened to Banksy's IP rights?

Monday, 5 of October of 2020

In the last few weeks, we have been reading in the newspapers several pieces of news claiming that Banksy has lost his copyright, because he has remained anonymous.

That media hype is, in fact, the result of a Decision of the European Union Intellectual Property Office -EUIPO-dated 14 September 2020, by which the EUIPO declared invalid a registered trademark over Banksy's work The Flower Thrower - a famous graffiti reproduced on a wall in Jerusalem - on the basis of bad faith, on the ground that the proprietor of the trade mark over that work did not intend to use it on the market, as a trade mark, at the time of the application for registration.

This decision is of particular interest, since the EUIPO does not only rule on complex issues of trademark law, such as the interpretation of the absolute prohibition of bad faith or the protection of the same image through different intellectual property rights, but also because the EUIPO is pondering the consequences of Banksy's anonymity for the protection of his works, Banksy's reticence about copyright ("Copyright is for losers", Wall and Piece) and about the existence of copyright on paintings made in real estate, without the owners' permission - even though the EUIPO lacks jurisdiction over these matters.

The EUIPO's decision arises from an application for a declaration of invalidity of the trade mark held by Pest Control (a company acting on behalf of Banksy), filed by Full Colour on the grounds of bad faith, under Articles 59(1)(b) and 59(1)(a) in conjunction with Articles 7(1)(b) and 7(1)(c) of the European Union Trade Mark Regulation.

According to the applicant, the trademark should be invalidated, in so far as it represents a work situated on a public place, which has been extensively photographed by the public, as well as been made available to the public, with Banksy's authorization, for use and modification on different products. The applicant therefore considers that the trademark is not capable of fulfilling the function of identifying the business origin laid down by the regulations on trademarks and that its registration is aimed solely at seeking to obtain a monopoly on a work for an indefinite period, in order to avoid Banksy having to disclose its identity to benefit from copyright protection. To this end, the applicant insists on Banksy's misgivings about copyright, by recalling past statements made by the artist such as "Copyright is for losers", an element which finally will not be taken into consideration by the Office as these are subjective expressions of the artist which have no relevance for the application of the European Union Trade Mark Regulation.

To the contrary, the proprietor of the trademark claims that Banksy has never allowed the work Flower Thrower to be used commercially and that the mere desire to prevent third parties from taking advantage of his creations does not imply the existence of bad faith. Furthermore, he points out that subjective statements cannot be relevant for the purposes of determining the validity of a trademark and that protection of the work by a trademark is necessary for Banksy's rights to be respected without affecting the artist's activity.
Despite the arguments put forward by the proprietor, the EUIPO upholds in its entirety the application for a declaration of invalidity on the ground of bad faith and cancels the trade mark on the work Flower Thrower for all the classes of the Nice Classification designated by Pest Control, since the evidence provided by the parties shows that there was no intention to use that sign as a trademark at the time of its registration.

Accordingly, the Office takes the view, for the purposes of reaching its decision, that Banksy opened a shop to market its products online (the public cannot access the physical shop but can only look through the window to order online) after the trademark application was filed, for the sole purpose of complying with the requirement of use in order to maintain registration. In reaching this conclusion, the EUIPO relies on a statement by Banksy, who said "Sometimes you go to work and it's hard to Paint, bur for the past few months I've been making stuff for the sole purpose of fulfilling trademark categories under EU law". Thus, the EUIPO considers that Banksy himself has recognized that the use of the trademark was not genuine, and that therefore the registration of the work The Flower Thrower as a trademark is a matter of avoiding the law and not of maintaining a market share by marketing goods for identification by consumers.

That said, EUIPO's decision may be questionable from a trademark point of view. Indeed, it makes a (perhaps too) broad interpretation of the concept of bad faith, taking into account the actual and genuine use of the trade mark, which applies to applications for revocation of a trademark for non-use and not to applications for a declaration of invalidity of a trade mark. In this case, it would have been enough to establish the sign's lack of distinctive character and its lack of indication of commercial origin. Furthermore, the EUIPO takes into account - in order to assert the lack of intention to use the registration as a trademark at the time of its application - subjective statements made by Banksy, thereby contradicting other statements the EUIPO had made concerning Banksy's misgivings about copyright, by stating that subjective statements should not be capable of influencing the validity of the registered rights.

However, the most controversial (and even worrying) elements of EUIPO's decision lie in the statements made by obiter dictum as to the existence of copyright in Banksy's work. While these have no practical consequence, it is striking how EUIPO expresses the possible lack of copyright due to Banksy's anonymity, despite the fact that the Copyright Law allows for the existence of anonymous works (the only limitation is the duration of protection, insofar as they enter the public domain 70 years after the publication of the work instead of 70 years after his death). On the other hand, the EUIPO claims that it is doubtful that Banksy could hold copyright on his graffiti, as it is illegal work that has not been made with the consent of the owners of the property in which it is reproduced, despite the fact that this claim contradicts copyright regulations and their different interpretations by the courts, particularly in Spain.

While this decision is subject to appeal, it should be noted that it may open the door to further trademark invalidation proceedings, as Pest Control also holds trademark rights over other emblematic works of the artist, including the famous work “Girl with Balloon”.