HM Insights

Trade mark or Copyright? Banksy’s intellectual property battles continue

Where applicable, an individual or business can be afforded intellectual property protection for artistic creations under both the law of copyright and trade marks, but the distinctions of the two protections should be borne in mind, as Banksy has been finding out

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Banksy has famously dismissed intellectual property rights in the past. However, since 2014 he has made trade mark registration applications in respect of several of his most prominent artworks, successfully recording them as EU trade marks.

Many of Banksy’s European trade mark registrations have now been challenged, with a number of recent decisions on these challenges emerging between his representative company, Pest Control Office Ltd, and a greetings card company, Full Colour Black Ltd, which is looking to invalidate Banksy’s trade mark applications so that it can continue to use his images on its merchandise.

Having succeeded in Europe, Full Colour Black is now going after Banksy’s attempts to trade mark two of his best known artworks - ‘Love is in the Air’ and ‘Girl with Balloon’ – in Australia. It was recently reported that Banksy was successful in these trade mark applications but, whilst the applications were accepted by IP Australia, Full Colour Black has opposed both Australian trade mark registrations on a number of separate grounds, one of them being that the applicant is not intending to use the trade mark.

In both jurisdictions (EU and Australia), the purpose of a trade mark is to identify the commercial origin of the goods or services at issue and distinguish these goods or services from those of other companies.

In this case, Banksy sought to register images of his artwork as trade marks, even though he doesn’t actually use the images for merchandise (ie “goods”) himself (“Banksy doesn’t do merchandise”). On this evidence, the EUIPO was persuaded that Banksy did not intend to use the images as trade marks himself at the time he registered them.

Banksy did set up a shop in an attempt to circumvent the non-use rules but he publicly confirmed that this was purely for the purpose of defeating the legal proceedings against his trade marks and this did not find favour with the EUIPO decisions.

Trade mark v copyright

In terms of artistic work, the fundamental intellectual property right which affords the creator protection is copyright.

Banksy’s artwork, on the face of it, falls within the most common of creations that attract copyright protection, which attaches automatically upon creation of the artwork. Copyright does not have the same requirements to be linked to commercial or business related activities. It arises in any artistic work provided it meets the criteria of originality as set out in the Copyright Designs and Patents Act 1988. However, as one of Banksy’s main USPs is his anonymity, protecting his work through copyright is not an option. He would have to waive his anonymity in order to enforce copyright in his art.

Use of trade mark and copyright are not mutually exclusive, they provide different rights and remedies. Therefore, if Banksy is able to defend the registered trademarks, by establishing that the artwork he sought to have registered as a trade mark was either used (or there was an intention to use it) in respect of goods or services, this would be the main way in which the artwork could be protected from exploitation. So far, he has not been able to establish this.

For other individuals or businesses, the prospect of “dual” protection of artistic creations is likely to be attractive. For example, trade mark registration is relatively straight forward and provides a degree of certainty in terms of what is protected under each registered mark, whereas in the UK, copyright protection is not registrable, and so enforcing such a right can be more complicated, given the need to show originality in the creation.

However, the challenges to Banksy’s trade mark portfolio are a timely reminder of one of the important differences between trade marks and copyright – the link that the creation must have to the commercial origin of the goods and services of the business if it is to be protected as a trade mark.