Between a Rock and a Hard Place: EUIPO Cancels Banksy’s Trademark
Active as a street artist since the 1990’s, Banksy’s notoriety and market value have shot up with every passing year.[1] His works are valued for their sharp political wit, distinctive style, and persistent anonymity, which is now an identifying feature of his artistic persona.[2] That anonymity is now at risk after the European Union Intellectual Property Office (“EUIPO”) Cancellation Division ruling on September 14, 2020 that cancelled Banksy’s trademark in Flower Thrower, one of his most iconic pieces.[3]
The ruling marks the end of a legal battle between Full Colour Black (“FCB”) and Pest Control Office Limited (“PCO”).[4] FCB is a UK-based greeting cards company, which describes itself as “specialising in the commercialisation of famous street art.”[5] True to this description, their homepage displays a slew of greeting cards, each for $4—2.99 pounds on the UK site—featuring Banksy pieces on the front.[6] From Flower Thrower to Mona Lisa Bazooka, there are over fifty Banksy images, with no trace of written reference to the artist.[7]
Established in 2009, PCO is the “[p]arent/legal guardian for the artist Banksy.”[8] PCO functions as the exclusive intermediary between the public and Banksy.[9] They also issue certificates of authenticity for Banksy works.[10] PCO began registering various Banksy works as trademarks with the EUIPO in 2014,[11] successfully registering Flower Thrower in July 2014.[12]
In March 2019, FCB filed a lawsuit with the EUIPO, asking for a declaration of invalidity as to Banksy’s registered trademark in Flower Thrower.[13] The lawsuit focused on Article 59(1)(b) EUTMR.[14] Under Article 59(b)(1), an EU trademark will be declared invalid where the applicant was acting in bad faith at the time of filing.[15] The bad faith standard is context-specific, and evidence before and after filing can be taken into account to inform whether the applicant was acting in bad faith at the time of filing.[16] To this end, the EUIPO looked at statements consistently disavowing Banksy-branded merchandise and allowing the public to download Banksy images for non-commercial use.[17] The EUIPO also examined Banksy’s attempt at briefly “opening” up a store at one point.[18]
In October 2019, seven months after FCB’s filing, Banksy had opened up Gross Domestic Product (GDP), a pop-up homewares shop.[19] The shop never opened to the public, functioning as a showroom, and all of the sales were conducted online through a raffle system.[20] In a flyer outside of the showroom, Banksy explained: “This shop has come about as a result of legal action. A greeting cards company are trying to sieze [sic] legal custody of the name Banksy from the artist, who has been advised the best way to prevent this is to sell his own range of branded merchandise.”[21]
This statement did not sit well with the EUIPO. They found it as an admission that the shop was not an honest effort to use the trademark to sell goods, but to tick off the boxes of EU trademark law requirements.[22] The EUIPO emphasized that since Banksy’s trademark filing in 2014, Banksy had never sold goods or services under his trademark.[23] It was only after FCB filed to cancel his trademark that he opened GDP, explicitly referencing the dispute as his reason for doing so.[24] The EUIPO found this as decisive evidence of bad faith, as there was never any intention to use the registered mark to sell goods or provide services.[25]
Rather than use the trademark to commercialize goods, the EUIPO stated that Banksy was using his trademark to circumvent the law as a replacement for copyright.[26] Banksy cannot rely on copyright without exposing his identity. In order to exercise copyright law, Banksy would need a legally determinable identity, which is impossible if he chooses to remain anonymous.[27] However, giving Banksy a name and a face would crush his artistic identity.
Artistic works often benefit from the name value of the artist and Banksy’s work is no exception. The secondary art market for Banksy’s artwork is immense, prompting people to rip down walls[28] and pay millions at auction.[29] People are desperate to buy Banksy works, even if he sells them in a collection titled, “I can’t believe you morons actually buy this shit,”[30] or tries to shred a print as soon as it is sold.[31] Part of the craze is Banksy’s allure as an anonymous artist, the secrecy it allows him to operate in, and the wild stunts it allows. But stuck between copyright and trademark, Banksy must choose either to commercialize against his beliefs or reveal his identity.
The EUIPO ruling leaves uncertainty as to the validity of Banksy’s remaining trademarks. At this point in time, Banksy’s open disdain for intellectual property law—embodied in his infamous statement “[c]opyright is for losers”[32]—is being turned against him. While the EUIPO concedes that Banksy’s personal views toward the law do not deprive him of its protections,[33] there remains the question of what protections he can have, if any, within the bounds of his beliefs.
Footnotes
