Flower Thrower Law Report
Banksy’s guarding of his personal identity suffered a set-back on 14 September 2020, when the EU Intellectual Property Office (EUIPO) cancelled Banksy’s 2014 registration as an EU trade mark of the renowned stencil image of Flower Thrower, 2005/06. EUIPO’s judicial reasoning merits closer examination.
Before doing so, consider Banksy’s key ways of protecting his personal identity over the past two decades or so. In the late 1990s Banksy began his practice as a freehand street graffiti artist, subsequently using stencils to facilitate swifter execution of work – and thus avoidance of detection and arrest for criminal damage or trespass. In the 2000s Banksy responded to increasing popularity and recognition by printing on paper or canvas reproductions of his publicly sited images and offering them for sale. In 2009 Banksy
established a separate public-facing legal entity to deal with the commercial dimensions of his practice while safeguarding his anonymity: Pest Control Office Limited (PCO), which from 2014 began registering with EUIPO trade marks of Banksy’s name and popular images.
Such EU trade mark registrations were a legal move evidently prompted by the approach from a UK-based company ‘specialising in the commercialisation of world-famous street art’, Full Colour Black (FCB), which had contacted PCO offering to pay royalties for its unauthorised photo-reproductions of Banksy’s stencil images printed on its greetings cards. No agreement was reached. FCB continued its merchandising, and in March 2019 filed a lawsuit with EUIPO claiming ‘revocation and declaration of invalidity’ of Banksy’s registered trade marks, using the image of Flower Thrower, 2005/06, as a prime example.
FCB argued that Flower Thrower ‘is the most iconic and famous’ of Banksy’s works, which had been ‘reproduced by a large number of third parties as items of merchandise’; but that PCO had never in such cases taken legal proceedings to halt violation of its EU registered trade mark. Further, that Flower Thrower ‘is a work of graffiti sprayed in a public place. It was free to be photographed by the general public and has been
disseminated widely. Banksy permitted parties to disseminate his work and even provided high-resolution versions of his work on his website and invited the public to download them and produce their own items.’
FCB also quoted from Banksy’s 2006 book, Wall and Piece, stating that ‘copyright is for losers’ to support its contention that trade marking fine art was an attempt by Banksy/PCO ‘to monopolise these images on an indefinite basis contrary to provisions of copyright law’. In other words, FCB highlighted that copyright is an automatic unregistered legal right that endures for a finite time (author’s life plus 70 years post-mortem); whereas trade mark is a registered legal right that endures for as long as the registrant (PCO) periodically renews its registration – potentially infinitely. The focus of attention on copyright was FCB’s foundation for building further argument that registration of a trade mark avoided ‘evidential burdens’ required to prove copyright infringement. This contention drove at the heart of FCB’s claim for cancellation of registration: a copyright lawsuit initially requires proof of copyright ownership, which invariably means revealing the personal identity of the author; whereas a registered trade mark lawsuit initially requires only proof of registration of the mark (image). Hence, FCB’s assertion that PCO’s reason for registering
images as EU trade marks was so that Banksy could preserve his anonymity, and at the same time have legal enforcement rights over them (as trade marks).
EUIPO summarised FCB’s key claims as follows. ‘The sole purpose of registering [Flower Thrower as a trade mark] was to prevent the ongoing use of the work which [Banksy] had already permitted to be reproduced … and to circumvent copyright law … which shows the filing was done in bad faith.’ FCB cited an EU trade mark court ruling in 2019 that ‘where there is no intention to use a sign as a trade mark, and to obtain a collateral benefit in the obtaining of a trade mark, constitutes an abuse of the system and an act of bad faith.’
EUIPO summarised PCO’s key arguments for retaining trade mark registration of Flower Thrower as follows. ‘[FCB] has not submitted sufficient evidence to prove that the [trade mark application] was filed in bad faith … there is no evidence that Banksy allowed even non-commercial use of the work … there are many works of art that are registered as trade marks in the EU to use these works [as] trade marks for commercial purposes.’ PCO cited an EU trade mark court ruling in 2018 that ‘a party that registers a trade mark in pursuit of a legitimate objective to prevent another party from taking advantage by copying the sign is not
acting in bad faith.’ This court ruling was cited to support PCO’s argument that ‘where a party is taking advantage of a sign due to their knowledge that the owner of the sign cannot enforce unregistered trade mark rights and copyright without prejudicing his public persona or business interests, obtaining a trade mark registration through an incorporated company in order to enforce these rights is a legitimate objective and not an application in bad faith.’
A further key PCO submission addressed the different duration of unregistered copyright versus registered trade mark: ‘Banksy’s copyright lasts for his lifetime plus 70 years, whereas, a trade mark can be cancelled … if it has not been put to genuine use as a trade mark for a continuous period of five years. As such, the trade mark can only be monopolised indefinitely if it is put to genuine use as a trade mark and, if not, will be vulnerable to cancellation long before the copyright protection ends.’
Taking account of both sides’ arguments, relevant EU registered trade mark law and court rulings, EUIPO’s Cancellation Division concluded that ‘the application is totally successful … based on the ground of bad faith’; and ruled accordingly.
EUIPO’s formal notice of its ruling reads:
‘The applicant [FCB] filed an application for a declaration of invalidity against European Union trade mark No 12 575 155 for the figurative sign [Flower Thrower image]. The applicant invoked the ground of bad faith … against [numerous classes of merchandise to which the image of Flower Thrower could be applied]. DECISION:
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 12 575 155 [Flower Thrower image] is declared invalid in its entirety.
3. The EUTM proprietor [PCO] bears the costs, fixed at EUR 1,080.’
Banksy and PCO have until 14 November 2020 to lodge an appeal against this ruling to the EUIPO’s Board of Appeal.
© Henry Lydiate 2020