Banksy's Weakass Attempt To Abuse Trademark Law Flops, Following Bad Legal Advice

from the gross-domestic-trademark-abuse dept

Nearly a year ago we wrote about the somewhat complex (and misunderstood by many) trademark dispute involving Banksy. There is a lot of background here, so I'm going to try to go with the abbreviated version. Banksy -- who has claimed that "copyright is for losers" -- has always refused to copyright his random graffiti-based art. However, as it now becomes clear, one reason he's avoided using copyright is because to register the work, he'd likely have to reveal his real name. Instead, it appears he's spent a few years abusing trademark law to try to trademark some of his artwork, including his famous "flower bomber" image, which was registered to a company called Pest Control Office Limited. Of course, to get a trademark, you have to use it in commerce, and many Banksy creations don't fit that criteria.

Either way, a small UK print operation called Full Colour Black, had built a business selling postcards of various graffiti-based street art work -- using photographs that they themselves took. Whether or not that violates copyright or maybe other moral rights is, perhaps, an interesting question. But it wasn't one that was approached here. Instead, Full Colour Black simply (and quite reasonably) sought to get Banksy's (sorry, Pest Control Office Limited's) trademark on the flower bomber image canceled because it was clearly an invalid trademark, and the work was not being used in commerce by Banksy.

You can argue that Full Colour Black profiting off of Banksy's work is unfair, but it's not trademark infringement. Banksy, somewhat bizarrely, ridiculously, and misleadingly, tried to frame the story as a big "greeting cards company" selling "fake Banksy merchandise," making it appear like Hallmark was ripping him off, rather than a tiny 3-person printing company that was trying to sell postcards of their own photographs of publicly-placed graffiti.

From there, Banksy got even worse legal advice. After realizing that his own lack of use in commerce was going to be an issue, Banksy created a "pop-up shop" in London, called (admittedly, cleverly) Gross Domestic Product. The pop-up shop itself was a Banksy-kind of performance art in its own way. The store was loaded up, but was never planned to be opened. You could just look in the windows from the outside. Banksy did, however, set up a way to buy some products online.

As we noted in our original post, despite claims that the pop-up shop was the right path to take from "arts lawyer and founder of the Design and Artists Copyright Society" Mark Stephens, who claimed he was giving "legal advice" to Banksy, the whole setup seemed much more likely to undermine his trademark claims, as it only underlined exactly how bogus the trademark claims were in the first place.

And, now the EU Intellectual Property Office has weighed in and... Banksy's trademark has been shredded like his Girl with Balloon painting. And, you know what? The EUIPO points out exactly what we argued in our original post:

However, Banksy’s audacious move appears to have backfired. The Cancellation Division today ruled that the EUTM “should be declared invalid” on the grounds of bad faith (with the non-distinction grounds not examined) because “it is clear that Banksy did not have any intention to use the EUTM in relation to the contested goods and services at the time of filing of the EUTM”. In the decision, the panel was scathing in its assessment of the shop, which it described as “inconsistent with honest practices”, stating: “The use, which was only made after the initiation of the present proceedings, was identified as use to circumvent the requirements of trademark law and thus there was no intention to genuinely use the sign as a trademark. Banksy was trying to use the sign only to show that he had an intention of using the sign, but his own words and those of his legal representative, unfortunately undermined this effort.”

The Cancellation Division also made clear that one of Banksy’s defining characteristics – his anonymity – was detrimental to his case. “Banksy has chosen to remain anonymous and for the most part to paint graffiti on other people’s property without their permission rather than to paint it on canvases or his own property... It must be pointed out that another factor worthy of consideration is that he cannot be identified as the unquestionable owner of such works as his identity is hidden; it further cannot be established without question that the artist holds any copyrights to a graffiti. The contested EUTM was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that is not a function of a trademark. Therefore, the filing of a trademark cannot be used to uphold these rights which may not exist, or at least may not exist for the person claiming to own them.”

The official cancellation notice actually goes further and, somewhat bizarrely, calls out Banksy's criticism of copyright law itself (which seems... to have nothing to do with the specific issue of whether a trademark should be cancelled).

Furthermore, Banksy has made numerous statements (which the applicant has submitted as evidence) in which he states that ‘copyright is for losers’, ‘Any advert in public space that gives you no choice whether you see it or not is yours. It’s yours to take, re-arrange and re-use’ (excerpt from Wall and Piece 2006) and, indeed, Banksy has used the copyright of others in some of his works. He also allows the general public to download and use his images, but not for a commercial purpose, although the proprietor denied this in its arguments, the website extracts show that Banksy did allow this practice.

Perhaps even more damning to the trademark claim is the fact that Banksy himself directly admits that he didn't sell products that competed with Full Colour Black:

From an examination of the evidence filed by both parties it would appear that, at the time of filing of the application for invalidity, the proprietor (or Banksy) had never actually marketed or sold any goods under the contested sign. Moreover, some of the proprietor’s webpage extracts dated in 2010-2011 state that ‘All images are made available to download for personal amusement only, thanks. Banksy does not endorse or profit from the sale of greeting cards, mugs, t-shirts, photo canvases etc. …’, ‘Banksy does not produce greeting cards or print photo-canvases….Please take anything from this site and make your own (non-commercial use only thanks)’ and ‘Banksy has never produced greeting cards, mugs or photo canvases of his work’. Therefore, there is no evidence that Banksy was actually producing, selling or providing any goods or services under the contested sign either prior to the date of filing of the contested EUTM or up to the date of filing of the application for a declaration of invalidity.

So, setting up a fake pop-up shop just to pretend to do so... is not looked upon kindly:

In the second round of evidence the applicant provided evidence that Banksy had begun to sell goods after the date of filing of the present application for a declaration of invalidity. There are a number of articles from some notable publications in the UK dated in October 2019 which speak of the opening of a Banksy shop which would not be opened to the public, but the public could 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. In these publications Banksy is accredited to saying that ‘the motivation behind the venture was “possibly the least poetic reason to even make some art” – a trademark dispute’. An article also quotes Mr. M.S. (the applicant has shown that he is a Director of the proprietor and also self-proclaimed legal advisor of Banksy) as saying ‘Banksy is in a difficult position…Because he doesn’t produce his own range of shoddy merchandise and the law is quite clear – if the trademark holder is not using the mark, then it can be transferred to someone who will…(Mr. M.S) proposed that Banksy begin his own range of merchandise and open a shop as a solution to the issue….’. In the same article Banksy says ”Sometimes you go to work and it’s hard to know what to paint, but for the past few months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law” and admitted that the subject matter is “not a very sexy muse”. The article points out that the windows display his works which include paintings such as the ‘Flower Thrower’. The article concludes that ‘Banksy stresses that, despite trying to defend his rights in this particular case, he hasn’t changed his position on copyright. “I still encourage anyone to copy, borrow, steal and amend my art for amusement, academic research or activism. I just don’t want them to get sole custody of my name”. The shop is called ‘Gross Domestic Product’ and the applicant also submitted an extract of the webpage of the shop dated 28/10/2019, in which it also encourages the copying, borrowing and uncredited use of Banksy imagery for amusement, activism and education purposes and to make merchandise for personal entertainment and non-profit activism for good causes, but not for passing them off as authentic and re-selling them.

From the evidence submitted Banksy had not manufactured, sold or provided any goods or services under the contested sign or sought to create a commercial market for his goods until after the filing of the present application for a declaration of invalidity. Only then, in October of 2019, he opened an online store (and had a physical shop but which was not opened to the public) but by his own words, reported in a number of different publications in the UK, he was not trying to carve out a portion of the commercial market by selling his goods, he was merely trying to fulfil the trade mark class categories to show use for these goods to circumvent the non-use of the sign requirement under EU law. Both Banksy and Mr. M.S, who is a Director of the proprietor, made statements that the goods were created and being sold solely for this cause. Therefore, by their own words they admit that the use made of the sign was not genuine trade mark use in order to create or maintain a share of the market by commercialising goods, but only to circumvent the law.

Oops.

Anyway, it appears that Banksy still has a US trademark on the flower bomber, but it was granted based on the EU trademark which is now invalidated, so it's possible that the trademark may get invalidated here as well.

Next time, perhaps, Banksy should get some better legal advice.

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Filed Under: banksy, copyright, eu, flower bomber, graffiti, mark stephens, trademark
Companies: full colour black, pest control office limited


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  1. icon
    That One Guy (profile), 15 Sep 2020 @ 11:13am

    Whoops

    Admit that you are only doing something to abuse the law, get smacked down as a result of it. Who could have ever seen that coming?

    He should have learned from the pros over at In-N-Out, put some effort into your attempt to abuse trademark law rather than just half-assing it and it'll work like a charm.

    reply to this | link to this | view in thread ]

  2. identicon
    Anonymous Coward, 15 Sep 2020 @ 11:20am

    One problem here

    Banks probably IS Full Colour Black, or the other way around. The only thing Banksy hates more than copyright is people not talking about Banksy.

    reply to this | link to this | view in thread ]

  3. icon
    Norahc (profile), 15 Sep 2020 @ 11:39am

    Next time, perhaps, Banksy should get some better legal advice.

    My popcorn futures would really appreciate it if Bansky partnered with Liebowitz for that legal advice.

    reply to this | link to this | view in thread ]

  4. icon
    Koby (profile), 15 Sep 2020 @ 1:02pm

    Copyright For Hire

    So he created a front company to hide his real name, and lost the trademark. But could he have created a front company, signed a Work For Hire agreement which assigned the copyright to the front company? If he could, then perhaps he could have registered the copyright through the company, while hiding his identity, instead of trying the bogus trademark thing.

    reply to this | link to this | view in thread ]

  5. identicon
    Anonymous Coward, 15 Sep 2020 @ 1:14pm

    Painfully obviously "banksy" isn't an artist. It's a group of people involved in a MASSIVE money laundering scheme. And it's working.

    Do a drawing...claim its worth $10 million. Launder your 10mil. Done.

    rinse + repeat

    reply to this | link to this | view in thread ]

  6. icon
    Uriel-238 (profile), 15 Sep 2020 @ 1:38pm

    "'Banksy' isn't an artist"

    Unless I'm missing something Banksy has produced a lot more art than lawsuits and has extended the dialogue about what art is and how its value should be assessed (specifically that capitalist measures don't measure art very well.)

    So if Banksy is a team of confidence players, it's one that's provided a significant -- and difficult to measure -- benefit to western culture.

    It is off-brand for Banksy to try to invoke the intellectual property system, especially considering his own work is often legally gray. Maybe he's hungry and struggling to make rent?

    reply to this | link to this | view in thread ]

  7. identicon
    Andy J, 15 Sep 2020 @ 1:44pm

    Registration doesn't mean revealing his Identity

    "However, as it now becomes clear, one reason he's avoided using copyright is because to register the work, he'd likely have to reveal his real name."

    Not how it works in the UK, we don't have any official copyright registration system. Indeed the UK law (like the US Copyright Act 1976 - see 17 U.S. Code § 302(c)) expressly acknowledges that an artist or author may use a pseudonym. If Banksy wished to register his work for copyright in the USA he can do so through an agent (such as Pest Control Office Ltd) and doesn't need to supply his real name. (see the Copyright Office Compendium section 110.05)

    reply to this | link to this | view in thread ]

  8. identicon
    Anonymous Coward, 15 Sep 2020 @ 1:45pm

    Re: Copyright For Hire

    The front company would, in the case of copyright, have needed to produce a "work for hire" contract in order to register or enforce any copyright interest. That contract would have to name the person being hired, a description of the work they were hired to perform and the compensation provided, and include their signature, thus defeating the point.

    A trademark registration, in contrast, need not have any link at all to the person who designed the mark. Anyone can claim anything as a trademark (provided they intend to use it in commerce, and that it is distinctive in some way).

    In practice, of course, not getting formal rights to the design you intend to use in your trademark is likely to get you sued into oblivion over copyright violations... but of course Banksy doesn't enforce his copyrights, and is not likely to start with his own shell company.

    reply to this | link to this | view in thread ]

  9. identicon
    Jordan Chandler, 15 Sep 2020 @ 1:47pm

    Re: Registration doesn't mean revealing his Identity

    Ah but then he'd be lying about his stance on copyright. He wants his cake and to eat it too

    reply to this | link to this | view in thread ]

  10. identicon
    copywroted, 15 Sep 2020 @ 3:41pm

    Banksy is the guy from Massive Attack. their work is identical and he was known for stencil work before the group took off.

    There was a guy that mapped out appearances of Banksy work in the US and it appeared on dates and times that matched Massive Attack US tour dates. I doubt the real Banksy is a roadie, nor would he need to follow them around to make US works he likely has the resources to do his own travel.

    It is an interesting thought though. Anonymous works are still copyrighted upon being fixed in a medium, but if registration requires going public, that has dire consequences for people like him whose whole selling point is the anonymity.

    reply to this | link to this | view in thread ]

  11. identicon
    Anonymous Coward, 16 Sep 2020 @ 12:13am

    Re: "'Banksy' isn't an artist"

    Not really, he's obviously trying to stop others profiting off of his work. He(she?) seems to want his art to remain free for all.

    reply to this | link to this | view in thread ]

  12. icon
    Scary Devil Monastery (profile), 16 Sep 2020 @ 12:35am

    Re: Copyright For Hire

    "If he could, then perhaps he could have registered the copyright through the company, while hiding his identity, instead of trying the bogus trademark thing."

    The AC above provides a longer explanation as to why not but I'll just put this out there, Koby - do you have any idea what sort of amusing yet terrifying shit-show would result from the already unprincipled trainwreck of red flag legislation which is copyright if it could be claimed anonymously?

    Liebowitz would be looking for any single line written where the original author was unverified and file lawsuits on behalf of every orphan and public domain work in existence.

    ...and in order not to win the court would have to come up with a way of proving a negative to his claim.

    reply to this | link to this | view in thread ]

  13. icon
    Scary Devil Monastery (profile), 16 Sep 2020 @ 12:35am

    Re: Re: Copyright For Hire

    in order for him not to win, that would have been, above.

    reply to this | link to this | view in thread ]

  14. icon
    Norahc (profile), 16 Sep 2020 @ 9:20am

    Re: Re: "'Banksy' isn't an artist"

    Not really, he's obviously trying to stop others profiting off of his work. He(she?) seems to want his art to remain free for all.

    His art isn't free...the property owners of the places he graffitis have to pay to have his "art" removed if they didn't consent to it in the first place. You'd think that someone who wants his intellectual property to be protected and respected would at least show some consideration for those whose property he paints on.

    reply to this | link to this | view in thread ]

  15. icon
    Get off my cyber-lawn! (profile), 16 Sep 2020 @ 9:36am

    You can't shun the system

    and still expect it to put money in your Banksy

    reply to this | link to this | view in thread ]

  16. icon
    That One Guy (profile), 16 Sep 2020 @ 10:14am

    Re: Re: "'Banksy' isn't an artist"

    People selling products with his art on them does not in any way prevent others from sharing his art for free.

    reply to this | link to this | view in thread ]

  17. icon
    Uriel-238 (profile), 16 Sep 2020 @ 11:43am

    Hence the gray.

    Well, yes. Banksy produces evocative graffiti and operates outside the system in which property is recognized. Which is why it seems out of character that Banksy would endorse or utilize IP laws.

    Banksy art should be public domain by definition, but then we human beings are so, so bad with consistently adhering to principles.

    That's why I wondered if he's hungry. The litigation feels desperate.

    reply to this | link to this | view in thread ]

  18. icon
    Bergman (profile), 18 Sep 2020 @ 7:18am

    Re: Whoops

    I wonder whether he'll use this as fodder to claim intellectual property law is rigged, rather than taking the lesson at face value?

    reply to this | link to this | view in thread ]


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