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Banksy and his uneasy relationship with IP

September 30, 2020, By

Banksy allegedly dislikes intellectual property. He said previously that copyright is for losers. Those of you who, like Briffa, are obsessed with IP (we literally can’t stop thinking, talking and writing about it), and who also appreciate irony, might enjoy this blog post.

The background is that Banksy previously created a piece of art (the Flower Thrower stencil mural). As the creator of an original artistic work, which would almost certainly qualify for copyright protection, Banksy would be the owner of the copyright in the mural and, if he was willing to identify himself, would be in a position to enforce his copyright and prevent other people from copying/commercializing/using his artwork (he could, for instance, prevent a greeting card company from selling greeting cards with images bearing his art). But … copyright is for losers. See above.

So, Banksy registered an image of the mural as a trade mark with the European Union Intellectual Property Office, in an effort to ‘control’ his art (i.e. prevent other people from copying/commercializing/using his art), without compromising his anonymity. A copyright infringement claim would require proof of authorship (and therefore proof of identity), whereas a trade mark infringement claim would not.

However, unfortunately for Banksy, Full Colour Black (a greeting card company who wanted to commercialize the image of the mural) were having none of this and challenged Banksy’s trade mark registration. In short, they asked the EUIPO to cancel the trade mark on the grounds that it should never have been granted because it was filed in bad faith.

The EUIPO considered the matter and ultimately concluded that Banksy had filed the application in bad faith. The view was that Banksy had not filed the trade mark application with the intention of actually using the image as a trade mark (in other words, he was not intending to use the image as a brand logo or brand identifier in the way that Nike uses the Nike ‘swoosh’ as a brand logo or a brand identifier). Rather, the EUIPO concluded that Banksy had only filed the trade mark application to allow him to monopolize the use of the image, without relying on copyright (i.e. without revealing his identity).

However, the EUIPO pointed out that it was not the function of a trade mark to facilitate Banksy’s circumnavigation of the law in this way (and threw the boot in reminding us that Banksy had also chosen to be very vocal regarding his disdain for intellectual property rights). The panel concluded that the trade mark was filed in bad faith, invalid and should be cancelled.

Briffa comment

This is not the end of the matter because the decision of the cancellation division of the EUIPO was only handed down in mid-September so Banksy still has the option to appeal the decision and, if he does, it may be overturned. However, a few points are noteworthy:

IP is hard. There are numerous different IP rights out there. The rules that govern them can be complex. They all function in slightly different ways. In some respects, they behave in drastically different ways. From a practical perspective, the key point to remember is that different aspects of even a very simple consumer product could be protectable by multiple different IP rights and it is important to investigate all of them if, unlike Banksy, you don’t think IP is for losers and you want to maximize the amount of control you have, and the amount of money you make, from your creativity.

IP is vulnerable. It is not uncommon for businesses to seek to maximize the scope of their IP protection by registering copyright works as trade marks or designs (or by having multiple IP rights protecting the same thing or different aspects of the same thing). However, as this case demonstrates, even after a right is registered it may be subject to challenge and cancellation. In this case the challenge arose out of a bad faith allegation, but registered rights can also be challenged if they are too similar to an earlier right, or if they are no longer in use, or if they are insufficiently novel. It is therefore essential to take specialist advice on the management and maintenance of your IP portfolio in order to avoid unwelcome surprises.

IP is ever-changing. This case gives us a new insight into how the EUIPO view’s bad faith applications. Previous cases have provided new insights into how courts and similar tribunals in different territories view copyright, design rights and other intellectual property rights. Because the parameters of the law can change slightly (in some cases, significantly) with each decision, businesses wishing to have robust protection for their precious IP assets must regularly review their IP portfolio, and their IP advice, to ensure that they are up to date.

Briffa are experts in all aspects of intellectual property law and practice. If you would like to arrange a free consultation with one of our specialist IP lawyers, please contact [email protected] or 020 7288 6003.

Written by Eamon Chawke, Partner

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