from the gross-domestic-trademark-abuse dept
Nearly a year ago we wrote about the somewhat complex (and misunderstood by many) trademark dispute involving Banksy. There is a lot of background here, so I’m going to try to go with the abbreviated version. Banksy — who has claimed that “copyright is for losers” — has always refused to copyright his random graffiti-based art. However, as it now becomes clear, one reason he’s avoided using copyright is because to register the work, he’d likely have to reveal his real name. Instead, it appears he’s spent a few years abusing trademark law to try to trademark some of his artwork, including his famous “flower bomber” image, which was registered to a company called Pest Control Office Limited. Of course, to get a trademark, you have to use it in commerce, and many Banksy creations don’t fit that criteria.
Either way, a small UK print operation called Full Colour Black, had built a business selling postcards of various graffiti-based street art work — using photographs that they themselves took. Whether or not that violates copyright or maybe other moral rights is, perhaps, an interesting question. But it wasn’t one that was approached here. Instead, Full Colour Black simply (and quite reasonably) sought to get Banksy’s (sorry, Pest Control Office Limited’s) trademark on the flower bomber image canceled because it was clearly an invalid trademark, and the work was not being used in commerce by Banksy.
You can argue that Full Colour Black profiting off of Banksy’s work is unfair, but it’s not trademark infringement. Banksy, somewhat bizarrely, ridiculously, and misleadingly, tried to frame the story as a big “greeting cards company” selling “fake Banksy merchandise,” making it appear like Hallmark was ripping him off, rather than a tiny 3-person printing company that was trying to sell postcards of their own photographs of publicly-placed graffiti.
From there, Banksy got even worse legal advice. After realizing that his own lack of use in commerce was going to be an issue, Banksy created a “pop-up shop” in London, called (admittedly, cleverly) Gross Domestic Product. The pop-up shop itself was a Banksy-kind of performance art in its own way. The store was loaded up, but was never planned to be opened. You could just look in the windows from the outside. Banksy did, however, set up a way to buy some products online.
As we noted in our original post, despite claims that the pop-up shop was the right path to take from “arts lawyer and founder of the Design and Artists Copyright Society” Mark Stephens, who claimed he was giving “legal advice” to Banksy, the whole setup seemed much more likely to undermine his trademark claims, as it only underlined exactly how bogus the trademark claims were in the first place.
And, now the EU Intellectual Property Office has weighed in and… Banksy’s trademark has been shredded like his Girl with Balloon painting. And, you know what? The EUIPO points out exactly what we argued in our original post:
However, Banksy’s audacious move appears to have backfired. The Cancellation Division today ruled that the EUTM “should be declared invalid” on the grounds of bad faith (with the non-distinction grounds not examined) because “it is clear that Banksy did not have any intention to use the EUTM in relation to the contested goods and services at the time of filing of the EUTM”. In the decision, the panel was scathing in its assessment of the shop, which it described as “inconsistent with honest practices”, stating: “The use, which was only made after the initiation of the present proceedings, was identified as use to circumvent the requirements of trademark law and thus there was no intention to genuinely use the sign as a trademark. Banksy was trying to use the sign only to show that he had an intention of using the sign, but his own words and those of his legal representative, unfortunately undermined this effort.”
The Cancellation Division also made clear that one of Banksy’s defining characteristics – his anonymity – was detrimental to his case. “Banksy has chosen to remain anonymous and for the most part to paint graffiti on other people’s property without their permission rather than to paint it on canvases or his own property… It must be pointed out that another factor worthy of consideration is that he cannot be identified as the unquestionable owner of such works as his identity is hidden; it further cannot be established without question that the artist holds any copyrights to a graffiti. The contested EUTM was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that is not a function of a trademark. Therefore, the filing of a trademark cannot be used to uphold these rights which may not exist, or at least may not exist for the person claiming to own them.”
The official cancellation notice actually goes further and, somewhat bizarrely, calls out Banksy’s criticism of copyright law itself (which seems… to have nothing to do with the specific issue of whether a trademark should be cancelled).
Furthermore, Banksy has made
numerous statements (which the applicant has submitted as evidence) in which he states
that ‘copyright is for losers’, ‘Any advert in public space that gives you no choice whether
you see it or not is yours. It’s yours to take, re-arrange and re-use’ (excerpt from Wall
and Piece 2006) and, indeed, Banksy has used the copyright of others in some of his
works. He also allows the general public to download and use his images, but not for a
commercial purpose, although the proprietor denied this in its arguments, the website
extracts show that Banksy did allow this practice.
Perhaps even more damning to the trademark claim is the fact that Banksy himself directly admits that he didn’t sell products that competed with Full Colour Black:
From an examination of the evidence filed by both parties it would appear that, at the
time of filing of the application for invalidity, the proprietor (or Banksy) had never actually
marketed or sold any goods under the contested sign. Moreover, some of the proprietor’s
webpage extracts dated in 2010-2011 state that ‘All images are made available to
download for personal amusement only, thanks. Banksy does not endorse or profit from
the sale of greeting cards, mugs, t-shirts, photo canvases etc. …’, ‘Banksy does not
produce greeting cards or print photo-canvases….Please take anything from this site
and make your own (non-commercial use only thanks)’ and ‘Banksy has never produced
greeting cards, mugs or photo canvases of his work’. Therefore, there is no evidence
that Banksy was actually producing, selling or providing any goods or services under the
contested sign either prior to the date of filing of the contested EUTM or up to the date
of filing of the application for a declaration of invalidity.
So, setting up a fake pop-up shop just to pretend to do so… is not looked upon kindly:
In the second round of evidence the applicant provided evidence that Banksy had begun
to sell goods after the date of filing of the present application for a declaration of invalidity.
There are a number of articles from some notable publications in the UK dated in October
2019 which speak of the opening of a Banksy shop which would not be opened to the
public, but the public could look at the window displays and buy the products online, after
a vetting procedure to ensure that they were not going to re-sell the items and were not
art dealers. In these publications Banksy is accredited to saying that ‘the motivation
behind the venture was “possibly the least poetic reason to even make some art” – a
trademark dispute’. An article also quotes Mr. M.S. (the applicant has shown that he is a
Director of the proprietor and also self-proclaimed legal advisor of Banksy) as saying
‘Banksy is in a difficult position…Because he doesn’t produce his own range of shoddy
merchandise and the law is quite clear – if the trademark holder is not using the mark,
then it can be transferred to someone who will…(Mr. M.S) proposed that Banksy begin
his own range of merchandise and open a shop as a solution to the issue….’. In the
same article Banksy says ”Sometimes you go to work and it’s hard to know what to paint,
but for the past few months I’ve been making stuff for the sole purpose of fulfilling
trademark categories under EU law” and admitted that the subject matter is “not a very
sexy muse”. The article points out that the windows display his works which include
paintings such as the ‘Flower Thrower’. The article concludes that ‘Banksy stresses that,
despite trying to defend his rights in this particular case, he hasn’t changed his position
on copyright. “I still encourage anyone to copy, borrow, steal and amend my art for
amusement, academic research or activism. I just don’t want them to get sole custody of
my name”. The shop is called ‘Gross Domestic Product’ and the applicant also submitted
an extract of the webpage of the shop dated 28/10/2019, in which it also encourages the
copying, borrowing and uncredited use of Banksy imagery for amusement, activism and
education purposes and to make merchandise for personal entertainment and non-profit
activism for good causes, but not for passing them off as authentic and re-selling them.
From the evidence submitted Banksy had not manufactured, sold or provided any goods
or services under the contested sign or sought to create a commercial market for his
goods until after the filing of the present application for a declaration of invalidity. Only
then, in October of 2019, he opened an online store (and had a physical shop but which
was not opened to the public) but by his own words, reported in a number of different
publications in the UK, he was not trying to carve out a portion of the commercial market
by selling his goods, he was merely trying to fulfil the trade mark class categories to show
use for these goods to circumvent the non-use of the sign requirement under EU law.
Both Banksy and Mr. M.S, who is a Director of the proprietor, made statements that the
goods were created and being sold solely for this cause. Therefore, by their own words
they admit that the use made of the sign was not genuine trade mark use in order to
create or maintain a share of the market by commercialising goods, but only to
circumvent the law.
Anyway, it appears that Banksy still has a US trademark on the flower bomber, but it was granted based on the EU trademark which is now invalidated, so it’s possible that the trademark may get invalidated here as well.
Next time, perhaps, Banksy should get some better legal advice.