Banksy’s trade mark troubles continue

As has now been widely reported over the last month or so, a number of Banksy’s trade mark registrations for some of his most famous artworks (including Bomb Hugger, Love Rat, Laugh Now and Flower Thrower) have been cancelled in the past year by courts/judges who decided that those trade marks were registered in ‘bad faith’.

The basic issue here is that different intellectual property rights are intended to protect different things. Patents are intended to protect the functionality of new inventions. Registered designs are intended to protect the appearance of new product designs. Trade marks are intended to protect brand names, logos, slogans and other brand assets. And copyright is intended to protection works of art and other creative works.

Therefore, the criticism of Banksy is that he has taken one intellectual property right (a trade mark) and sought to use it in a way that was never intended (i.e. the protection of a work of art, rather than the protection of a brand asset). In other words, when courts/judges say that the Bomb Hugger, Love Rat, Laugh Now and Flower Thrower trade marks were registered in ‘bad faith’, they mean Banksy filed those trade mark applications knowing that he never intended to use them as trade marks (e.g. as brand logos or other brand identifiers).

The principal motivating factor behind Banksy’s actions (we assume) is his desire too maintain his anonymity. Enforcing his copyright (the IP right intended to protect artworks) requires him to identify himself as the ‘author’ of his artworks, whereas enforcing his trade mark rights (an IP right not intended to protect artworks) does not require him to identify himself.

How courts around the world will grapple with this issue, and how Banksy will seek to protect himself and his future artworks, remains to be seen. But right now it would appear that Banksy will have to reveal his identity if he wants to enforce his copyright and regain control of his portfolio of artworks.

Briffa comment

First, for anyone out there intending to commercialise Banksy’s artwork without consent (or anyone else’s for that matter!) we would say “proceed with caution”. Just because an artist remains anonymous in the early part of their career, does not mean they will always do so. More generally, just because an IP owner does not enforce their rights initially, does not mean they may not seek to do so later. Anyone who wilfully uses another person’s artwork without consent may be liable for damages or an account of profits at some point in the future.

Second, for anyone out there in Banksy’s position, we would say a few things. First, just because the EUIPO has decided that these trade mark law may not be used in this way, does not mean that every court and every judge in every jurisdiction will reach the same conclusion. ‘Bad faith’ is a difficult concept to grapple with and we note for example that the legal position in Australia may be different to the legal position in Australia. In other words, it may be worth seeking trade mark protection in strategically important territories, even if there is a risk that they may be challenged at some point in the future.

Second, even if trade marks are not available to protect artistic works in the way envisioned by Banksy, a registered designs may be the next best thing. Registered design protection lasts for a maximum of 25 years (less in some territories), which isn’t great when compared with copyright protection which lasts for the lifetime of the author plus 70 years and/or trade mark protection

which can theoretically last forever. However, 25 years is better than nothing and during that time an author could control/commercialise the artwork whilst maintaining his/her anonymity.

Third, even if trade mark protection and design protection are not available, there may be other creative solutions. For example, an author in Banksy’s position may design to collaborate with another artist who is not concerned about maintaining his/her anonymity, such that the resulting artwork would be a work of joint authorship for the purposes of copyright law and the non-anonymous ‘author’ would be in a position to enforce copyright on behalf of both joint authors.

Briffa is a firm of specialist intellectual property lawyers. If you are an artist or creative who is considering how best to protect yourself and your art we would love to hear from you. We offer free consultations to all new clients, online, on the phone or in our offices in the Business Design Centre in London. Get in touch with us on 020-7288-6003 or info@briffa.com.