Rosie Giannone is a 1L JD Candidate at Osgoode Hall Law School.

Image from the

EUTM 17981629 in the name of Pest Control Office Limited

The European Union Intellectual Property Office’s (EUIPO) Board of Appeal has a EUIPO decision from May 2021, rendering invalid a trademark registration for Laugh Now, better known as the monkey sign image, by anonymous U.K. street artist Banksy.

Background

Banksy’s graffiti artwork Laugh Now first appeared in Brighton, England, in 2002. The work depicts an image of a monkey wearing a sandwich board around its neck, reading, “Laugh now, but one day we’ll be in charge.” , a U.K. company specializing in greeting cards depicting street art, subsequently used this image in their products.

On November 7, 2018, Pest Control, Banksy’s authentication body, filed an EU trademark claim on behalf of the artist for Laugh Now. Typically, artists protect their artwork using only copyright law. However, artists are required to when claiming copyright infringement. Trademark law allows Banksy to remain anonymous and maintain his mysterious artistic persona.

On November 28, 2019, Full Black Colour applied to cancel Banksy’s trademark under the European Union Trademark Regulation (). Full Black Colour claimed that the work was More specifically, Aaron Wood, a trademark lawyer, argued on behalf of Full Colour Black that . A trademark holder must make of a registration by using it to acquire market share in relation to distinguishable goods or services. that Banksy only registered the trademark to prevent others from using his image and to avoid revealing his identity under copyright infringement claims.

On May 18, 2021, the EUIPO Cancellation Division ruled in favour of Full Colour Black. The decision repeatedly referenced a by Full Colour Black in 2019, which challenged the registration of a trademark for Banksy’s work, The Flower Thrower. The EUIPO found that since the art is a work of graffiti originally spray-painted in a public place, Furthermore, the Board accepted Banksy’s 2007 book Wall and Piece as damning evidence that this trademark was registered in bad faith. In the book, Banksy famously claimed that “copyright is for losers” and stated that

The EUIPO also accepted that Banksy knew that his works were widely photographed and reproduced by third parties between these parties and himself. The EUIPO noted that Banksy provided high-resolution versions of his work on his website and invited the public to download them. Essentially, the court found that and that the artist had done nothing to prevent this. Ultimately, the EUIPO declared the trademark registration of Laugh Now .

Appeal

On October 25, 2022, the EUIPO Board of Appeal reversed the Cancellation Division’s decision, ruling that Banksy’s trademark registration for Laugh Now was not made in bad faith.

The Board found that the wide-scale commercial use of Banksy’s artwork had not been proven. Although Banksy makes his artwork available online for free downloading, he these images from being used for commercial purposes.

Furthermore, that a work of art subject to copyright protection could also act as a trademark. Registering a trademark to prevent others from using one’s work does not amount to bad faith when the applicant is the legitimate owner.

Moreover, the Board notes that the trademark was cancelled only six months into Banksy’s . During this time, the rights-holder is not required to use their trademark. In this case, it was for the Cancellation Division to assume that Banksy never intended to use the trademark or allow legitimate third parties to use it as licensees.

Finally, the Board reasoned that accepting Banksy’s statement that “copyright is for losers” as supporting a finding of bad faith .

According to Lee Curtis, a trademark specialist, this case is a for Banksy and Pest Control, as it allows the artist to maintain his anonymity, contributing to his artistic success. Full Colour Black has brought invalidity proceedings against 7 of the 15 European Union Trademarks (EUTM) filed by Pest Control on behalf of Banksy. In 6 of these cases, the Cancellation Division invalidated the trademarks, finding that they had been filed in bad faith. To date, Laugh Now is the only case successfully appealed.

Full Colour Black has expressed with the outcome of the appeal, noting that it is out of line with the Board’s decisions thus far. However, the company has no plans to appeal the decision.

Ultimately, the Board of Appeal’s decision clarifies that a trademark should be presumed to have been registered in good faith unless proven otherwise, leaving Banksy the one laughing now.

The post Who’s Laughing Now? EUIPO Board of Appeal Rules that Banksy Can Keep his Trademark and Anonymity Too appeared first on IPOsgoode.

The artist has obtained trademarks for various works. Although artists typically don’t use trademark law to protect their art, Banksy opted for this form of legal protection as it allowed the artist to remain anonymous. By contrast, artists’ traditional route, copyright, requires them to reveal their identity when claiming infringement. Trademarks can also be renewed indefinitely, while copyright protection is limited in time. Banksy’s disdain for copyright is well known and even depicted in his work, . ��

This strategy of protection, however, took a turn in 2019, when Full Colour Black, a greeting card business, challenged Banksy’s right to trademark the , also called The Flower Thrower. The Flower Thrower was first seen as a mural in Bethlehem in 2005. In 2014, Banksy’s authentication bureau, Pest Control, successfully obtained the EU trademark over the image as a “” for various goods and services, including printed matter, clothing, and textiles. Five years later, in 2019, Full Colour Black challenged the registration of The Flower Thrower trademark. Full Colour Black argued that Banksy acquired the trademark in bad faith.

For a trademark to remain valid, its holder must , meaning in relation to the goods or services for which it is registered. Rights-holders do not need to show use for an from the registration date to rely upon its protection. After this period, however, the rights-holder must show use to maintain protection for their mark. Banksy is known to abstain from creating works for commercial use and did not do so until 2019, after the challenge from the greeting card business arose. At this time, Banksy created an online store accompanied by a where they sold products with the trademarked image to fulfill the trademark requirement.

In September 2020, the EUIPO Cancellation Division agreed with Full Colour Black and . The panel stated that, “,” and that opening the shop as an attempt to save the trademark only after it was challenged was “.” Banksy and their lawyer both showed this by publicly stating that the shop was solely intended to fulfill the trademark requirements.

Looking at the artist’s intention in commercializing their goods, rather than assessing simply whether the trademark is being used commercially, may leave ambiguity in the law regarding what is required of artists. Is proof of a good faith intention to use the trademark required to defend it against a challenge? If the artist had not explicitly stated that their intention in creating the store was to fulfill trademark requirements, would the trademark be valid? These questions are definitely running through not only Banksy’s mind, but the minds of all trademark-seeking artists out there.

The decision also raises issues of the relationship between copyright and trademarks. Can artists who create works traditionally protected under copyright seek trademark protection if they can show some intention to commercialize the works? Will this lead to the perpetual monopolization of works that were intended to have limited protection under copyright law? At this stage, all we know is that Banksy’s entire portfolio of trademarked works may be at risk of losing its IP protection. Eager fans or entrepreneurs may use this decision to capitalize on Banksy’s famous images. This decision may even be the perfect opportunity to push Banksy out of anonymity to pursue copyright infringement actions. This two-year legal battle does teach us one thing for sure – copyright may not be for losers after all.

Sarah Raja is a JD Candidate at Osgoode Hall Law School. She is a IPilogue contributing editor and was a fellow with the IP Innovation Clinic.

The post Banksy Tried to Play the IP System – and it Backfired appeared first on IPOsgoode.

Since its emergence in 2005, has become one of Banksy’s most iconic, yet controversial works. Seeking to protect the artist’s legacy, his representative, , registered the image as a trademark without text in 2014. While artists typically assert and enforce their rights through copyright law, pseudonymous artists, like Banksy, are pressured to reveal their identities. , for instance, copyright in a work of unknown authorship expires seventy years from making or first being made publicly available (section 12). By contrast, the author who is or becomes known secures rights for life-plus-seventy years (section 12).

In Banksy’s case, any copyright that he might claim as a pseudonymous artist would expire sooner than it would if his identity were or became known. He has therefore chosen to rely upon a constellation of nondisclosure agreements and trademark applications “.” Banksy might remain pseudonymous and gain exhaustive rights through trademark law because, unlike copyright, a trademark can last indefinitely.

The Applicant’s Assertions

In March 2019, (“FCB”), a greeting card company that commercialises street art, applied to the EUIPO for a declaration that Banksy’s Flower Thrower trademark is invalid. It argued that the mark had been filed in bad faith—an absolute ground for invalidity under Article 59(1)(b) of the .

In claiming bad faith, the applicant noted that Banksy’s mark was based on a work of graffiti sprayed in a public place. As such, the image had been photographed and disseminated widely. The artist had even shared high-resolution copies, inviting the public to download them and create their own work. These assertions were only bolstered by Banksy’s attitude towards copyright. The artist has infamously denigrated this sphere of IP protection, declaring that “.”

FCB also contended that Banksy does not use the images he has registered as trademarks. It cast his applications as cynical attempts to circumvent copyright and monopolise his art. The company alluded to a pattern of registration by which the artist attempted to register his works as trademarks in Europe in order to rely on his EU rights to claim registration elsewhere.

The Artist’s Response

Unsurprisingly, Pest Control insisted that FCB submitted insufficient evidence to establish bad faith. It stressed, “ […] from seeking rights and protections available under the law. An anti-establishment viewpoint does not prevent a party from utilising establishment mechanisms in order to further their view” (at 5). From Pest Control’s perspective, Banksy did not undertake his legal manoeuvring in bad faith. The artist was provoked by parties exploiting his alleged inability to “enforce unregistered trade mark rights and copyright without prejudicing his public persona or business interests” (at 5).

The EUIPO’s Decision

The EUIPO agreed with FCB, finding that the Flower Thrower mark was filed in bad faith. The Panel acknowledged the hurdles the artist would face with copyright, but based its decision on his use of the trademark. After scrutinising the artist’s intentions and the mark’s brief commercial use, the Panel determined that Banksy’s actions were “inconsistent with honest practices” (at 15). He clearly intended “to obtain […] an exclusive right for purposes other than those falling within the functions of a trade mark” (at 15).

The Panel’s decision prompts questions about the IP protections afforded to anonymous and pseudonymous personae. The law recognises anonymous and pseudonymous forms of authorship as legitimate conduits to rights; however, it incentivises, or pressures, authors to make themselves known. Assuming that Banksy can claim copyright, thereby dodging the need for trademark, the law appears to insist that he exchange his name for standard, let alone preferable, copyright terms. Notwithstanding any policy that might justify this scheme, Banksy’s general criticism of copyright appears apt. Copyright might not require artists to surrender their names, as Banksy has recently suggested, but it rewards those who do with better terms.

Written by Halyna Chumak, JD Candidate 2021, enrolled in Professors D’Agostino’s and Vaver’s 2020/2021 IP Law & Technology Intensive Program at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.

The post Is Copyright Still for Losers? The EUIPO Declares Banksy’s “Flower Thrower” Trademark Invalid appeared first on IPOsgoode.