In brief
A company called Pest Control, which claims to act on behalf of the anonymous street artist Banksy, has won a trade mark infringement claim against an art exhibition organiser for selling Banksy merchandise in a museum gift shop. Law Graduate Max Jones reports.
Background
You would be forgiven for thinking that Banksy, the UK-based artist who has earned a name for flouting the law and making works with a distinct anti-establishment sentiment, is not the litigating type. The artist's safely-guarded anonymity may have offered protection from the consequences of making illegal street art, but it presents an obstacle to bringing a legal claim. This year, though, a company claiming to represent Banksy won a claim for trade mark infringement against the organiser of an exhibition of the artist's works at the MUDEC Museum in Milan.
The claim
The claim was brought by Pest Control Office Limited, which describes itself as a 'handling service' that certifies Banksy works. Although the company purports to act on behalf of Banksy, it brought this claim in its own right. Pest Control holds European Union trade mark rights over the word mark 'BANKSY' and a number of figurative marks depicting well-known Banksy pieces, including the 'Girl with a Red Balloon' and 'Flower Thrower' works.
The exhibition, a retrospective entitled 'A Visual Protest: The Art of Banksy', ran between November 2018 and April 2019. It was not authorised by the artist and, although the works presented were authenticated, the organiser also sold merchandise (notebooks, postcards, bookmarks and the like) which incorporated reproductions of Banksy's art.
Pest Control claimed, amongst other things, that the exhibition organiser infringed its trade marks by unlawfully reproducing them in promotional materials and publications, and in the merchandise sold in the museum gift shop.
The decision
The Milan judge held that use of the trade marks on merchandise was purely commercial and amounted to infringement, ordering that all unauthorised merchandise be removed from the shop. The use of the trade marks in promotional materials, however, was not infringement because it was descriptive use, which was necessary to describe the content of the exhibition to the public. The judge took into account that the marketing materials expressly indicated the lack of authorisation from Banksy.
The exhibition organiser also challenged the validity of the trade marks on the grounds they were registered in bad faith – not for commercial use by Pest Control, but rather to prevent use by third parties. The judge did not assess the claim because it was not properly supported. However, he did note that Pest Control had shown only limited use of Banksy's brand. This suggests that, unless Banksy begins producing and selling branded merchandise, it may be difficult for Pest Control to defend the validity of the trade marks in the future. Under Australian law, such trade marks would be vulnerable for removal from the register on the ground of non-use.
What about copyright?
Notably, there was no copyright infringement claim in this case, which is how artists traditionally enforce their rights in their artworks. This is because Pest Control could not show the Court the assignment of copyright without revealing the identity of Banksy as the assignor, and therefore could not demonstrate that Pest Control was the copyright owner. Banksy's anonymity means there are evidentiary challenges that affect the availability of copyright and other claims such as passing off.
Lessons for artists
Banksy was once quoted as having said 'copyright is for losers'. We tend to disagree, and believe copyright remains the best way for artists to protect their work. However, this case shows that trade marks are other valuable IP rights that can offer protection for artists who can show commercial use of their work. It also highlights the unique obstacle anonymity presents in copyright claims, which is particularly relevant to artists or musicians who operate under a pseudonym like Banksy.