Towards the end of 2022, a significant judicial decision tackled a longstanding discussion within intellectual property law circles: whether copyright and registered trademark protections can apply simultaneously to the same image.
Such questioning was the focus of lawsuits by Full Colour Black Limited (FCB), a UK-registered company ‘specialising in the commercialisation of world-famous street art’. FCB’s claims were against Banksy’s UK business company, Pest Control Office Limited (PCO). FCB had printed unauthorised photo-reproductions of Banksy’s stencil images on greetings cards it was selling. FCB sought a merchandising licence from PCO, and offered to pay royalties accordingly, but no agreement was reached. In 2019, FCB filed a first lawsuit with the Cancellation Division of the EU Intellectual Property Office (EUIPO) claiming ‘revocation and declaration of invalidity’ of PCO’s EU-registered trademarks, citing Banksy’s registered image of Flower Thrower, 2005/06, as a prime example.
Later that year FCB applied to the Cancellation Division for revocation of another Banksy registered trademark image: of a monkey with a sandwich board hung around its neck, which Banksy often reproduced as Laugh Now, 2002 (including wording on the board: ‘laugh now but one day we’ll be in charge’). PCO had registered that image without wording on the board.
In 2020, the Cancellation Division ruled in FCB’s favour, revoking Flower Thrower’s trademark registration on the basis that PCO’s application had been made in ‘bad faith’ (see Artlaw AM440). PCO did not appeal against this cancellation.
On 1 January 2021, UK law automatically converted EU trademarks, registered from UK-based businesses pre-Brexit, into UK-registered international trademarks. Later that year the Cancellation Division revoked Laugh Now’s registration, unsurprisingly deciding that it had been registered in ‘bad faith’ – just as it had ruled the previous year in relation to the Flower Thrower registration. PCO appealed to EUIPO’s Board of Appeal against Laugh Now’s registration cancellation.
In October 2022, the Board ruled in PCO’s favour, giving extensive reasons. The Board’s starting point was basic EU trademark law: registered marks may be declared invalid by EUIPO’s Cancellation Division that must consider characteristics peculiar to the mark in order to ascertain whether any specified grounds for cancellation apply.
The Board then addressed FCB’s main ground for revocation: that PCO’s registration application had been made in bad faith. Under EU trademark law bad faith means that the applicant for registration ‘had the intention either of undermining, in a manner inconsistent with honest practices, an exclusive right for purposes other than those falling within the functions of a trade mark’. However, there is a legal presumption that trademark registrations are sought in good faith until proof to the contrary is established by a cancellation applicant. In other words, FCB had to prove to the Board’s satisfaction that PCO had acted in bad faith when it sought Laugh Now’s registration.
FCB had argued that Banksy’s failure to enforce his Laugh Now copyright was compelling evidence proving PCO’s bad faith. For example, FCB argued, the Laugh Now image had been publicly available long before PCO’s registered trademark application: it had been photographed, copied and disseminated as a decorative feature in many merchandising articles by third parties. FCB further argued that, as author of the artwork, Banksy would be required to reveal his identity when suing anyone for infringement of the artwork’s copyright. Hence, FCB reasoned, Banksy never took legal steps to address the infringement of copyright in Laugh Now.
FCB ended its bad faith contentions by quoting Banksy’s public statements, in 2007 and 2019, that ‘copyright is for losers’; concluding that PCO had registered Laugh Now chiefly to extend Banksy’s time-limited copyright protection against infringement by gaining potentially indefinite registered trademark protection. (Copyright protection arises automatically on creation of an original artwork, not by its being formally registered, and lasts for the artist/author’s lifetime plus decades post-mortem. Whereas a sign or symbol may be formally registered as a trademark by a government intellectual property office, and protection lasts indefinitely as long as registration is renewed.)
The Board did not accept that Banksy would lose his anonymity if he sued for infringement of Laugh Now’s copyright. In the Board’s judgment, a party to ‘legal proceedings may request to be treated in a confidential way in order to limit, to the extent that it is possible, the dissemination of personal data’; and ‘the relief from not being required to reveal his identity did not exclude the intention of Banksy to use the trademark’.
As to Banksy’s public statements that ‘copyright is for losers’, the Board said that anyone was free to express views and opinions publicly, as is guaranteed by the Universal Declaration of Human Rights 1948, namely: ‘Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.’ The Board added that Banksy’s statements on copyright did not express or imply that he would, in consequence of his view, unlawfully use the system of trademark protection as mere substitute for copyright protection and ruled that the statement, ‘copyright is for losers’, had ‘no bearing at all for the case at hand’.
The Board concluded that FCB’s ‘arguments, facts and reasoning did not justify or explain clearly a dishonest behaviour’ from PCO when registering Laugh Now as a trademark, and that EU trademark law’s ‘presumption of good faith is still valid, and the cancellation application by FCB failed’.
All in all, the Board’s decision in this case – with extensive reasoning – clarifies that the same artwork or sign may be protected as both ‘an original creative work by copyright, and as an indicator of commercial origin by registered trademark law’.
Banksy’s reputation as a disruptor within the contemporary art ecosystem is well known, widely reported and unlikely to diminish. Legal issues surrounding Banksy’s practice are evident from the unorthodox methods he chooses to deliver his artworks for public viewing – as much as such issues can be suggested by their visual content. General news media reports tend to lead with sensational headlines about the latest endeavours of one artist – one often characterised as an enfant terrible. These reports seldom critically analyse and explore art and law issues, and their wider implications for the contemporary art ecosystem. It is invariably useful to do so.
© Henry Lydiate 2023