Is "copyright for losers"?

Tuesday 27 October, 2020

It is according to Banksy, the anonymous England-based graffiti artist, film director and political activist. However, a recent EU trade mark decision cancelling the trade mark Banksy held over one of his images may have changed his mind. Now all 14 of his trade marks may be at risk.

Full Colour Black, a greeting card company which uses many of Banksy’s designs on its cards, challenged Banksy’s trade mark to his iconic flower bomber image. The company wanted to use the image, but was unable to due to the trade mark protection. The EU Trade mark Office upheld the challenge and cancelled Banksy’s trade mark. It found that the trade mark had been filed in bad faith: Banksy had never intended to use the trade mark and had only filed it to prevent third parties from using it. Banksy only began selling stationery and merchandise featuring the image after Full Colour Black had filed its challenge and, according to him and his legal representatives, only to comply with the use requirement so that he could keep the trade mark.

But it’s his art! Why can’t he protect it?

Essentially, this decision comes down to the difference between copyright and trade mark. Copyright law gives artists exclusive rights to control commercial use and distribution of their art. Banksy could prevent Full Colour Black from using his designs by asserting copyright over them. The problem is that Banksy can’t take copyright action without revealing his identity, and anonymity is an important part of his persona. Instead, Banksy has traditionally relied on registering trade marks to protect his works of art, filed by Pest Control, the official body which authenticates Banksy’s art.

However, trade mark law is designed to protect commercial use of images by identify and promote goods or services. Trade mark owners must use their designs in the course of trade, otherwise they can be challenged and removed. Although works of art can be trade marked, for example, Disney or Pixar characters, this is because Disney and Pixar use this art commercially by regularly producing and selling merchandise featuring those characters.

So, what’s the solution?

Unfortunately Banksy only has two options if he wants to control commercial use of his art: he can exercise copyright over his art work, which would mean disclosing his identity, or he can actively use his trade marks for commercial purposes by regularly producing and selling merchandise featuring his art. This case serves as an important reminder to all trade mark owners that when it comes to trade marks, it really is a case of use it or lose it.

If you have any questions about how to best protect your intellectual property, our IP experts below can help.