It may be easier than you think to legally capitalize on the images of the well-known – yet anonymous – British graffiti artist “Banksy.”
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, Copyright is for losers.
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 image of a protestor throwing flowers, 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 “trademark without text” 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 make use of the mark in a genuine manner, meaning in relation to the goods or services for which it is registered. Rights-holders do not need to show use for an initial five-year grace period 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 pop-up shop in South London 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 declared the trademark invalid. The panel stated that, “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,” and that opening the shop as an attempt to save the trademark only after it was challenged was “inconsistent with honest practices.” 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.