Banksy Hits a Wall: Why the Artist Secured Trademarks Out of Necessity, Not Bad Faith
In the early 1990s, a young street artist began executing free-hand graffiti designs throughout the city of Bristol, England, as part of an enigmatic collection of artists known as the DryBreadZ Crew. That young artist would eventually be known to the world as Banksy, himself a deeply reclusive figure notorious for witty and often politically-provocative street-art installations. Banksy, whose real name and identity have never been formally disclosed, has long made anonymity central to his work and identity as an artist. His anonymity is not only central to his artistic persona, but it also contributes to the value of his creations, many of which have fetched seven and eight-digit prices at the world’s most prestigious auction houses. [1] Yet as Banksy’s fame and notoriety have increased, so too have the number of people profiting off the appropriation and sale of his designs. He makes many of these designs available for download on his website, emphasizing that he supports their use in private and activist contexts, but not commercial. [2] However, Banksy’s anonymity made the fulfillment of this wish difficult: in order to allege copyright infringement on his designs, Banksy would have to reveal his full, legal identity to prove he is the “unquestionable owner,” which would severely, if not irreparably, undermine his persona and the value of his work. [3]
In an effort to guard against the commercialization of his designs while still maintaining his anonymity, Banksy (through his representatives, who operate under the name “Pest Control”) secured trademarks for many of his designs, including his famed Flower Thrower image. However, in 2019, his Flower Thrower trademark was challenged as invalid. The case was brought to the European Union Intellectual Property Office (EUIPO) by Full Colour Black, a greeting card company that produced a line of cards featuring the Flower Thrower image, and who alleged that Banksy had secured the trademark with no plan to use it for the intended purpose of commercializing goods. They pointed to Banksy’s actions and public comments as evidence for his lack of genuine intent, including his decision to open a pop-up store in London called Gross Domestic Product. At the outset of litigation, Banksy began selling products with his own trademarked images, saying that he had been “making stuff for the sole purpose of fulfilling trademark categories under EU law.” [4] The EUIPO ruled that Banksy’s actions represented an effort to circumvent EU trademark law, leading them to cancel Banksy’s trademark on the basis of bad faith. Now, it would appear, Banksy’s entire trademarked portfolio is at risk, and he is put in a position where he must either risk revealing his identity (if he wishes to pursue the more conventional legal path of copyrighting his works) or losing legal control of his work.
First, it should be noted that the legal concept of “bad faith” on which the EUIPO based their decision has never been formally or explicitly defined within EU law; the standards for evaluating allegations of “bad faith” are nebulous at best. Cases involving such allegations typically consult the judgement rendered in Lindt v. Franz Hauswirth, which broadly defines bad faith as “conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices.” [5] With respect to obtaining a trademark, the judgement notes that “it is not a requirement of the [European Union Trade Mark (EUTM)] system that an EUTM owner must at the time of applying for an EUTM also have the intention of using it,” but that “it could be seen as an indication of dishonest intention if it subsequently becomes apparent that the owner’s sole objective was to prevent a third party from entering the market.” [6] The conclusions reached in this judgement informed the decision rendered in Sky Plc v. Skykick, another seminal case pertaining to the assessment of bad faith in securing a trademark. In this case, the court held that “the bad faith of the trade mark applicant cannot […] be presumed on the basis of the mere finding that, at the time of filing his or her application, that applicant had no economic activity corresponding to the goods and services referred to in that application.” [7]
From these precedents, two particularly pertinent conclusions can be drawn. The first is that an applicant need not have an intent to use the trademark at the time of application. Thus, a party cannot construct an allegation of bad faith on the basis that another party lacked intent to use the trademark at the time it was secured. The second conclusion is that “bad faith” does not offer a substantive enough standard against which the behavior of defendants can be measured. Accusations of “bad faith” are subjective in nature, and decisions as to whether trademarks were secured in “bad faith” should be informed by the unique circumstances of a given case.
The circumstances of Banksy’s case are indeed unique, and they should be accordingly factored into the final judgement. Banksy secured a trademark for his Flower Thrower image in 2014, a legal move considered somewhat unconventional within the realm of intellectual property protection. The vast majority of artists seek to protect their work through copyright, though alleging copyright infringement requires that the artist prove they are the “unquestionable owner” of the work. [8] This necessarily entails disclosing their legal identity on the claim, which would have required Banksy to reveal his identity in order to protect his work. The only other avenue of legal protection he could pursue was trademarking his designs, as there is no analogous requirement that he disclose his legal identity. Banksy is someone whose artistic enterprise is constructed upon his anonymity; it is part of his allure, and it contributes considerably to the value of his works. Yet in Full Colour Black v. Pest Control, he came face-to-face with a legal system that essentially forced him to make an impossible choice: remain anonymous or protect the integrity of his work.
The right of an artist to produce “anonymous or pseudonymous works” is protected by Article 7, Section 3 of the Berne Convention for the Protection of Literary and Artistic Works (all contracting parties, including the EU and the UK, must comply with the substantive provisions of this Convention). [9] And yet there is an obvious tension between this right to anonymity and the legal system within which Banksy must operate. Given that the law is not presently structured to allow anonymous artists to protect their works, even though this right is outlined in the Berne Convention, courts should view Banksy’s actions not as evidence that he acted in bad faith, but rather that he acted out of necessity.
The decision by the EUIPO is eligible for appeal, and there is no reason to believe that Banksy and his representatives will not challenge it. Banksy’s paintings have resonated deeply with audiences around the world, not only on the merit of the images themselves, but also because of the political and social commentary he is able to offer through the locations where he creates his paintings. His Flower Thrower image was painted on a wall in Bethlehem, an area historically at the center of periodic unrest. The figure in the painting is dressed in clothing often associated with protests, and yet he is not throwing a dangerous projectile, but rather a bouquet of flowers. The poignancy of such a painting depends upon the time and place in which it is viewed, and Banksy should be able to enjoy the right to determine where and how his images can be produced.
The present EUIPO ruling in Full Colour Black v. Pest Control fails to recognize that Banksy, through Pest Control, was not legally required to have an intent to use his trademark to commercialize goods at the time of his application, and that the absence of such an intent does not indicate an application made in “bad faith.” Moreover, the criteria for establishing “bad faith” are subjective in nature, and should be informed by the circumstances of a given case. The circumstances of Banksy’s case make clear that securing a trademark was the only avenue that would make it possible for Banksy to legally protect his work against commercialization by third-parties, while not compromising the anonymity to which he is entitled under Article 7, Section 3 of the Berne Convention. It is far from an ideal arrangement, to be sure, but it reveals a failure within EU law to provide formalized avenues of legal protection for the works of anonymous artists. If Pest Control is unsuccessful on appeal, not only is Banksy’s entire trademarked portfolio in jeopardy, but so is the legal future of anonymous street art around the world.
[1] Scott Reyburn, Banksy Painting ‘Devolved Parliament’ Sells for $12 Million, The New York Times Company (2019), online at https://www.nytimes.com/2019/10/03/arts/design/banksy-devolved-parliament-auction.html (visited November 25, 2020).
[2] Full Colour Black Ltd. v. Pest Control Office Ltd., No. 33 843 C, 5, 2, [2020] EUIPO.
[3] id
[4] id
[5] Case C-529/07 Chocoladefabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH, EU:C:2009:361, [2009] ECR I-4893.
[6] id
[7] Case C-371/18 Sky plc, Sky International AG, Sky UK Ltd v SkyKick UK Ltd, SkyKick Inc., EU:C:2019:864, [2020].
[8] Full Colour Black Ltd. v. Pest Control Office Ltd., No. 33 843 C, 5, 2, [2020] EUIPO.
[9] “Berne Convention for the Protection of Literary and Artistic Works.” World Intellectual Property Organization, online at https://www.wipo.int/treaties/en/text.jsp?file_id=283698#P127_22000 (visited November 23, 2020).