Copyright is for losers

March 15, 2021

CANCELLATION No 33 843 C (INVALIDITY) Full Colour Black Limited v Pest Control Office Limited

banksy's flower thrower


The artist known as “Banksy” created the artwork in Israel in 2005 and it was registered as a trade mark in 2014 by the artist agent’s Pest Control Office (PCO). In 2019, Full Colour Black Limited (FCBL) applied to obtain a declaration of invalidity on the grounds of bad faith. FCBL are a greetings card company who wanted to reproduce the artwork on their own goods. This was under Article 59(1)(b) EUTMR. The applicant also cited Article 59(1)(a) EUTMR as the trade mark application was made contrary to the principles of Article 7 EUTMR. 

FCBL argued that the application was made in bad faith for the following reasons:

  1. The artist had only reproduced the sign as an artwork;
  2. The nature of the artwork (i.e. graffiti sprayed in a public place) is a criminal act;
  3. The artist has publicly stated that “copyright is for losers”; and
  4. The artist is seeking trade mark protection to avoid protecting his artistic rights under copyright law, which would require him to lose his anonymity. 

Findings of the EUIPO

The EUIPO held that the applicant succeeded and issued a declaration of invalidity. As a general rule, for a finding of bad faith, there must be some action by the trade mark owner of a dishonest intention. 

The Court determined that when PCO filed the trade mark they did not have any intention of using the sign to commercialise goods or provide services. They had subsequently made good use of the mark but this was not enough as it was only made after the initiation of proceedings. 

There was a key finding by the Court that the artist’s main concern was losing their anonymity which would have been required in copyright proceedings. 

Relevance for future artists

The rise of the internet has created an easily accessible way for artists to disseminate their work under a brand name which cannot necessarily be linked back to a legal person. Particular social media platforms have been used by some artists to facilitate their business model due to their visual nature. A further example of this is Sophie Tea, albeit she in an easily identifiable legal person. Sophie Tea is well known for her pink and glittery Instagram style which has boomed in recent years. This increasing access to markets can only be good for artists looking to sell their works. 

The standard practice for artwork with a legally identifiable artist, is for them to assert copyright in their own work. However, what is an artist to do when they wish to protect their work but also maintain their anonymity? 

The options here are minimal. Banksy’s original stance in applying for a trade mark through an agent, be it a business partner or affiliated company, was seen to be a valid one. This will allow an artist to protect their work through a recognised property right. In the wake of CANCELLATION No 33 843 this is no longer the case.

Banksy fell foul of the need to use the trade mark to commercialise goods or provide services. An artist can circumvent this by using their trade marks to commercialise goods, such as producing and selling the art works on printed t shirts, mugs or mouse mats. 

The principle of keeping the register clear of unused marks to ensure developments can be effectively protected in the future is a good one but it does work against anonymous artists. There is not an adequate solution currently in legislation for an anonymous artist to protect their work where they do not wish to commercialise their work. 

It is suggested here that where an artist does not want to profit from their work in the commercial sense that assigning rights in the work to a charity or non-profit organisation and allowing them to benefit from the trade mark rights through producing or licensing branded goods would be a valid option. 

This is something Banksy has participated in before. His other work , called “mobile lovers”, was sold by the Bristol Riverside boxing club in 2014 with the artist’s blessing. This was to fundraise to keep the boxing club open to benefit the local youth. There is further precedent for this where J M Barrie gifted the rights in Peter Pan to royalties from any books and any adaptation of the play, in perpetuity, to Great Ormond Street Children’s Hospital. 

Although J M Barrie’s gift required an amendment to the Copyright Designs and Patents Act 1988, the principle of this unique right, should be extended to allow anonymous artists to gift their rights to charities. This newly proposed system would allow for charities to fundraise in innovative ways and tackle the lacuna in the law of which Banksy has fallen foul. 

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Phoebe Whitlock is an experienced paralegal in data protection, intellectual property and technology law. She is currently studying intellectual property law at the University of the Oxford.