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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