Tag Archives: Intellectual property

Traditionally, press articles seek to attract the attention of readers with sensationalist headlines which do not always reflect the reality of the news story in question. Recently, many media outlets have reported on the supposed “unsuccessful legal battle” of the famous street artist Banksy in trying to “preserve his copyright” in the iconic “Flower Thrower” graffiti.

It has been reported that a “court” issued a “judgment” in which the artist’s copyright was “rejected” by “judges” in “a lawsuit” against a company that sells postcards, all because Banksy has chosen to remain anonymous. Perhaps it is worth trying to put things into their proper context.

The “judgment” is in fact a decision dated 14 September 2020 by the EUIPO’s Cancellation Division, that is, by the European Union trademark and design registration authority; the “lawsuit” is in reality an “administrative” action for invalidity of a trademark lodged against a registration for a figurative trademark, covering different goods in the International Classification, that reproduces the image from Banksy’s work.

The trademark is owned by the company Pest Control Office Limited, whose connection with Banksy was accepted by the EUIPO without entering into too much detail, and the applicant for the declaration of invalidity is the company Full Colour Black Limited, which was seeking the cancellation of the registration in order to be able to sell postcards with the image of the famous graffiti.

The invalidity action is based on the bar to registration laid down in the European Union Trade Mark Regulation, with respect to signs applied for “in bad faith”. In the case of the trademark contested in the action, bad faith is justified in that the owner of the trademark, the company Pest Control Office Limited, never intended to use the trademark to sell goods in the marketplace. Rather, it was filed in order to prevent others from being able to do so. Such intentions are contrary to the essential function of a trademark.

It is true that this conclusion was reached in the EUIPO’s decision following an analysis of the choice of the artist Banksy to remain anonymous and of the practice of the owner of the registration to allow the “Flower Thrower” work to be reproduced, provided that it is not for commercial purposes. However, the considerations on copyright in this decision are simply “obiter dictum” remarks of an administrative body that has cancelled a registration because the owner had no intention of using the mark when it was filed.

More importantly, the fact that the company Pest Control Office Limited has lost the exclusive right to use the Banksy work as a trademark for specific goods, as a consequence of the cancellation of the registration, does not mean that Banksy has lost his copyright in this work or the right to take legal action for infringement against any party seeking to make commercial use of the same.

In light of this “administrative” precedent from the EUIPO, it is important to keep in mind that in Spain we have a “judicial“ precedent that is much more in line with the orthodox continental approach to copyright, in a case involving another internationally renowned street artist.

I refer to the Madrid Provincial Appellate Court’s judgement [in Spanish] of 2 November 2018, which recognised the intellectual property rights of Keith Haring in his iconic “Radiant Heart” work, convicting of infringement a company that had launched a wide range of merchandising items under a very similar logo to which it had added the word “Madrid”.

When art has the power to move us, it does not matter where it is on display, whether on a wall in Jerusalem, in a gallery or online. The attitude of the artist does not matter either, whether they are keen to flaunt their work or prefer to remain anonymous. It does not deserve to be fodder for lucrative merchandising, against the wishes of the artist. At the present time in Europe, it is reasonable to consider that such practices are open to challenge.

Author: Antonio Castán

Published previously in Expansión [in Spanish]

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On 8 September 2020, the Court of Justice of the European Union (CJEU) handed down a judgment in case C-265/19, involving the Irish collective management organisations RAAP and PPI, the former representing artists and the latter representing producers.

The two entities had reached an agreement for PPI to be responsible for collecting and then sharing out the amounts obtained from the communication of the phonograms to the public through wireless broadcasting, remuneration established in Article 8(2) of Directive 2006/115/EC on rental and right and lending right (hereinafter the “Directive”).

The conflict arose as a consequence of PPI’s refusal to pay the corresponding part of this remuneration to RAAP, asserting that the Irish copyright act (CRRA) excludes performers who are neither nationals nor residents of Member States of the European Economic Area (EEA) and whose performances “do not come from a sound recording carried out in the EEA”. According to PPI, the remuneration of performers of certain States would infringe the principle of reciprocity laid down in the CRRA, in particular, the remuneration of United States performers, as this country only grants Irish performers the right to equitable remuneration to a very limited extent.

Obviously, RAAP opposed this interpretation stating that the performer’s nationality and residence are irrelevant in relation to sharing these amounts, as nothing is specified in this regard in Article 8(2) of the Directive.

In this context, the CJEU considered four questions.

The CJEU combined and rephrased the first two questions asking whether, in light of the Rome Convention or the World Intellectual Property Organisation Performances and Phonograms Treaty (WPPT), Article 8(2) of the Directive precludes a Member State from excluding performers who are neither nationals nor residents of Member States from the aforementioned remuneration.

First, the court refers to the fact that Article 8(2) of the Directive establishes no limitation whatsoever in that sense and adds that, from recitals 5 to 7 of this same text, it follows that these concepts must be interpreted “in such a way as not to conflict with the international conventions”. This forces the concept to be interpreted in accordance with the WPPT, with Member States having to pay performers and producers who are nationals of any contracting party. Consequently, the CJEU rules that the right to a single equitable remuneration cannot be limited by the national legislature solely to nationals of the EEA Member States, thus harming nationals of third States.

The court then goes on to consider the third question, namely, whether the reservations entered by third States affecting the rights of nationals of Member States will allow for the exclusion of nationals of third States from the rights recognised in Article 8(2) of the Directive.

The CJEU acknowledges that these reservations may affect the position of performers and producers of Member States vis-à-vis those of third States, considering the application of the principle of reciprocity laid down in international treaties, as “the need to safeguard fair conditions of involvement in the recorded music business constitutes an objective in the public interest capable of justifying a limitation of the right related to copyright”.

Nevertheless, although it deems them to be reasonable, the CJEU points out that these limitations can be established by the EU but not by Member States, pursuant to Article 52.1 of the Charter of Fundamental Rights of the European Union.

Thus, a Member State cannot limit the right to equitable remuneration even if there are reservations of third States in this sense. Only EU lawmakers are able to make such a decision.

The fourth question considers whether Article 8(2) of the Directive precludes equitable remuneration being limited only to the producer and not being shared with the performer. The court responds to this question by briefly indicating that it does preclude such a limitation.

In my opinion, this judgment does in fact provide certain relevant conclusions. Firstly, the existence of regulations such as the articles of the Irish CRRA in dispute here, reveal a lack of harmonisation in European intellectual property legislation, as only in an environment with such insufficient harmonisation can there be regulations that are so contrary to the provisions of a Directive.

Secondly, it shows some of the causes of inequalities in the recorded music market. While the CJEU’s interpretation seems conclusive, it is difficult to imagine EU lawmakers undertaking legislative reforms that impose limitations, like those discussed here, on the remuneration of nationals of third States. If it continues this way, the EU will remain in an unbalanced position with respect to countries such as the United States in this area. Whilst it is true that this type of restriction may be questionable in a global market such as the music market, applying the principle of reciprocity could provide a provisional solution for these inequalities.

Author: Martín Bello

Previously published in Economist & Jurist [in Spanish]

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