Copyright is for losers … and so are trade marks: Banksy’s EUTM declared invalid due to bad faith

Can a sign representing an artwork be registered as a trade mark? Can trade mark registration be used to monopolize artworks? If so, can any such intention and behaviour be repressed?

The answer to all these questions is in the affirmative, as Pest Control – a handling service acting on behalf of elusive artist Banksy – learned yesterday, when the Cancellation Division of the European Union Intellectual Property Office (EUIPO) ordered that its EU trade mark (EUTM) registration representing one of Banksy’s best known artworks, the Flower Thrower, be declared invalid on the ground of bad faith.

Background

In 2014, Pest Control obtained the registration of the figurative mark represented below as an EUTM in relation to goods and services in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, and 42.

In 2019, Full Colour applied to obtain a declaration of invalidity for all relevant goods/services on grounds of bad faith under Article 59(1)(b) EUTMR and also pursuant to Article 59(1)(a) EUTMR in connection with Article 7(1)(b) and (c) EUTMR.

The parties’ arguments

The registered trade mark represents one of Banksy’s most iconic artworks. According to the applicant, the trade mark proprietor has never used the sign as a trade mark and Banksy himself has only ever reproduced the sign as an artwork.

Furthermore, the artwork at hand is a graffiti sprayed in a public place, which has been widely photographed and disseminated also thanks to Banksy’s personal stand that "copyright is for losers". According to the applicant, Banksy would be seeking trade mark protection to avoid protecting his rights under copyright law, which would require him to lose his anonymity [though it should be noted that some copyright enforcement attempts have been made in the recent past].

In sum, the trade mark – argued the applicant – was registered without any intention other than to monopolize this and other registered images (Pest Control does hold other figurative EUTMs for Banksy's artworks) for an indefinite period, contrary to the principles of copyright law. It would also seek to use the EU registrations as the basis for obtaining US trade mark registrations. As such, the present registration would have been done in bad faith.

In turn, the trade mark proprietor submitted that the applicant had failed to demonstrate bad faith. Furthermore, the evidence provided would not demonstrate that Banksy has given ‘free reign’ to the general public to use his works for purposes other than non-commercial ones. In any case, what Banksy said or did would neither change the law nor prohibit him or the proprietor from seeking rights and protections available under the law. Holding otherwise would be inter alia contrary to the principles of freedom of expression and equality before the law under, respectively, Articles 11 and 20 of the EU Charter of Fundamental Rights.

In addition, in accordance with NEUSCHWANSTEIN, a party that registers a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign would not be acting in bad faith. The recent Sky decision [Katposts here] would also support this conclusion.

The decision: bad faith (Article 59(1)(b))

The Office recalled that, as Advocate General (AG) Sharpston noted in her Lindt Goldhase Opinion, for a finding of bad faith there must be:

1. some action by the EUTM proprietor which clearly reflects a dishonest intention, and
2. an objective standard against which such action can be measured and subsequently qualified as constituting bad faith.

In accordance with KOTON, bad faith subsists when the trade mark owner lacked any intention to use a trade mark or engaging fairly in competition. Rather, they acted with the intention to undermine the interests of third parties, in a manner inconsistent with honest practices, or with the intention to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin.

The Office noted that, in 2019, that is after the date of filing of the application for a declaration of invalidity, Banksy launched a shop - Gross Domestic Product – which, while not not opened to the public, would allow customers to look at the window displays and buy the products online, after a vetting procedure to ensure that they were not going to re-sell the items and were not art dealers. The motivation for this venture was "“possibly the least poetic reason to even make some art” – a trademark dispute", ie to show use of the registered signs as trade marks.

According to the Office, this behaviour shows that the EUTM proprietor never had any intention to use the contested EUTM as a trade mark in relation to the relevant goods and services. As a result, it concluded that the trade mark should be declared invalid under Article 59(1)(b). Since the applicant succeeded on this ground, the Cancellation Division did not examine the request based on the other grounds.

Comment

This is an interesting decision for several, different reasons.

Starting from the trade mark-related ones, the decision seems to adopt quite a generous reading of the concept of bad faith, by treating in the same way situations in which one seeks to use trade mark law to 'extend' an expired copyright and situations in which one seeks to use trade mark law in parallel to an existing copyright. 

In this sense, it elaborates further - without mentioning it - on the suggestion already advanced in case law – including recently in the EFTA Court’s decision in Vigeland [Katposts here] (referring to the AG Opinion in Shield Mark) – that “a trade mark based entirely on copyright protected work carries a certain risk of monopolisation of the sign for a specific purpose, as it grants the mark’s proprietor such exclusivity and permanence of exploitation which not even the author of the work or his estate enjoyed”. As a result, “[t]he interest in safeguarding the public domain … speaks in favour of the absence of individual protection for, or exclusive rights to, the artwork on which the mark is based.”

One may wonder whether bad faith is the right tool to employ to purse such public interest goals or whether, instead, a simple assessment made on, e.g., distinctiveness (or lack thereof) would avoid casting a 'judgement' on the trade mark owner’s overall intentions and behaviour, while allowing for more straightforward approaches.

Moving on to copyright, the decision has some (patronizing) notes which deserve more careful consideration. Two in particular stand out.

The first one concerns Banksy’s “disdain for intellectual property rights”. Thankfully, the Cancellation Division concluded that what the author thinks is irrelevant to determine copyright subsistence. In any case, the Office could have not held differently, as CJEU case law – including the recent judgment in Brompton Bicycle [Katposts here] – suggests that no subjective considerations find place in the context of inter alia determining copyright subsistence.

The second, and possibly more concerning one, relates to the consideration – not elaborated in any way – that, since the Flower Thrower is a piece of street graffiti placed on a wall on the side of a garage in Jerusalem,

There is an argument that street graffiti, which is not carried out with the express permission of the owner of the property on which it is placed, is carried out in commission of a criminal act. To such extent, no copyright rights might accrue from such a work (or there is an argument that the copyright may be assumed to be gifted to the owner of the property). Moreover, graffiti is normally placed in public places for all to view and photograph, which might also possibly annul any ownership rights in copyright, although this is expressly denied by the proprietor.

Conflicts between real and intellectual property are not novel, and there is interesting case law on this point. However, it would be problematic to hold in principle that only works realized out of legality, and not also works realized out of illegality, would be eligible for copyright protection. Possibly even more problematic is the Office’s suggestion that the public display location of an artwork may “annul” any ownership rights in copyright. Both are unacceptable conclusions.

In any case, let's stay tuned for the next episodes in the ‘Banksy in IPland’ saga …