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ABSTRACT
Banksy has long been the poster boy for the art counterculture. But like most things in the art world, the counterculture has become mainstream, and so has Banksy. Having spent his entire career shunning the intellectual property system, Banksy is now firmly entrenched in it. This article will explore Banksy’s recent trade mark strategy, including his success and his failures in a trilogy of cases heard across Europe. This article will explore the consequences of these decisions for Banksy’s remaining trade mark portfolio and how they may influence his legal strategy, and his art, into the future.
Disclosure statement
No potential conflict of interest was reported by the author(s).
Notes
1 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 14.
2 RG 52442/2018 Pest Control Office Limited v 24 Ore Cultura s.r.l.
3 See EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd involving the ‘Flower Thrower’ trade mark and EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd involving the ‘Laugh Monkey’ trade mark.
4 Exit Through the Gift Shop: A Banksy Film (2010) was directed by Banksy and premiered at the Sundance Film Festival on 24 January 2010. It was also nominated for an Academy Award for Best Documentary Feature. The film follows filmmaker Thierry Guetta’s project to chronicle the underground world of street art.
5 Jason Daley, Watch This $1.4 Million Banksy Painting Shred Itself As Soon As It’s Sold, Smithsonian Magazine, https://www.smithsonianmag.com/smart-news/watch-14-million-bansky-painting-shred-itself-soon-it-sold-180970486/, 8 October 2018.
6 Jason Daley, Watch This $1.4 Million Banksy Painting Shred Itself As Soon As It’s Sold, Smithsonian Magazine, https://www.smithsonianmag.com/smart-news/watch-14-million-bansky-painting-shred-itself-soon-it-sold-180970486/, 8 October 2018.
7 Or around US$24.5 million. See Nadeem Badshah, ‘Banksy Sets Auction Record with £18.5m Sale of Shredded Painting, The Guardian, https://www.theguardian.com/artanddesign/2021/oct/14/banksy-auction-record-shredded-painting-love-is-in-the-bin, 15 October 2021.
8 Emily Shugerman, ‘Banksy: 8 Signs Massive Attack’s Robert Del Naja is Mystery Artist, Independent, https://www.independent.co.uk/arts-entertainment/music/news/banksy-robert-del-naja-massive-attack-art-who-he-identity-real-name-graffiti-music-similarities-a7805741.html, 6 October 2018.
9 Claudia Joseph, ‘Graffiti Artist Banksy Unmasked … As a Former Public Schoolboy From Middle-Class Suburbia’, Daily Mail, https://www.dailymail.co.uk/femail/article-1034538/Graffiti-artist-Banksy-unmasked---public-schoolboy-middle-class-suburbia.html, 12 July 2018.
10 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 15.
11 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 50.
12 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 50.
13 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 78.
14 Simon Hattenstone, ‘Something to Spray’ in The Guardian, https://www.theguardian.com/artanddesign/2003/jul/17/art.artsfeatures, 18 July 2003.
15 For a history of Warhol’s work and his various styles including his stencil art see Frayda Feldman, Jörg Schellmann, Claudia Defendi, Andy Warhol Prints: A Catalogue Raisonne 1962–1987 (Distributed Art Publishers, Inc., 2003, 4th ed). For more on Roy Lichtenstein see Janis Hendrickson, Lichtenstein (Taschen, 2016). As to Blek le Rat see Sybille Prou and King Adz, Blek Le Rat: Getting Through the Walls (Thames & Hudson, 2007).
16 Simon Hattenstone, ‘Something to Spray’ in The Guardian, https://www.theguardian.com/artanddesign/2003/jul/17/art.artsfeatures, 18 July 2003.
17 Banksy, Wall and Piece (Century, London, 2006).
18 Banksy, Wall and Piece (Century, London, 2006) 196.
19 For a survey of the relevant jurisprudence from the United Kingdom and the United States see Enrico Bonadio, ‘Street Art, Graffiti and Copyright’ in Enrico Bonadio and Nicola Lucchi (eds) Non-Conventional Copyright: Do New and Atypical Works Deserve Protection (Edward Elgar, 2018) 83, 86–87.
20 Enrico Bonadio, The Cambridge Handbook of Copyright in Street Art and Graffiti (Cambridge University Press, 2019). Also see Marta Iljadica, Copyright Beyond Law: Regulating Creativity in the Graffiti Subculture (Hart Publishing, 2016). Also see Enrico Bonadio, ‘Street Art, Graffiti and Copyright’ in Enrico Bonadio and Nicola Lucchi (eds) Non-Conventional Copyright: Do New and Atypical Works Deserve Protection (Edward Elgar, 2018) 83, 86–87.
21 It is acknowledged that much of today’s street art is produced legally, thanks to local city councils and private entities who make their property available to street artists. One example is the Bushwick Collective, which is the name given to several blocks in the Brooklyn neighbourhood of Bushwick where street artists have free permission to paint murals on building walls. This outdoor street art gallery features artists from all over the world. See The Bushwick Collective http://www.thebushwickcollective.com/.
22 In early 2021, a slab of brick was cut from the wall in Nottingham after Gallery owner John Brandler paid six-figure sum to the landlord of a property which featured the Banksy piece Hoola Hooping Girt. He claimed he wanted to help preserve it and put it on public display. See Annabel Nugent, ‘Bansky’s Hula-Hooping Girl Artwork Removed from Nottingham Building After it is Purchased for ‘Six-Figure Sum’’ in Independent, https://www.independent.co.uk/arts-entertainment/art/news/banksy-nottingham-hula-hoop-instagram-b1803434.html, 17 February 2021.
23 Tara Wu, ‘Banksy Murals in England Defaced, Removed Just Days After Appearing’ in Smithsonian Magazine, https://www.smithsonianmag.com/smart-news/banksy-murals-england-defaced-removed-just-days-after-appearing-180978449/, 16 August 2021.
24 See for example Ross Lydall, Julian Glover and Sean Morrison, ‘Banksy’s Coronavirus-Inspired Tube Artwork ACCIDENTALLY Removed by Cleaner … and Transport Chiefs Want Him to do Another One’ in Evening Standard, https://www.standard.co.uk/news/uk/banksy-tube-graffiti-artwork-coronavirus-removed-cleaner-a4498771.html, 15 July 2020.
25 See generally Marta Iljadica, ‘Painting on Walls: Street Art Without Copyright?’ in Kate Darling and Aaron Perzanowski (eds) Creativity without Law: Challenging the Assumptions of Intellectual Property (New York University Press, 2017) 118–141.
26 Marta Iljadica, ‘Painting on Walls: Street Art Without Copyright?’ in Kate Darling and Aaron Perzanowski (eds) Creativity without Law: Challenging the Assumptions of Intellectual Property (New York University Press, 2017) 118, 118. The author goes on to discuss the norms that do in fact motivate street artists and graffiti artists.
27 See for example Melena Ryzik, ‘Another Banksy Mural to Go From Wall to Auction’ in The New York Times, https://www.nytimes.com/2013/08/14/arts/design/another-banksy-mural-to-go-from-wall-to-auction.html, 13 August 2013.
28 See Pictures on Walls http://www.picturesonwalls.com/.
29 Pictures on Walls ceased trading on 31 December 2017. See ‘Pictures on Walls – The End of an Era (And a Chance for a Banksy Print)’ in Art of the State, https://www.artofthestate.co.uk/blog/2017/10/28/pictures-walls-end-era-chance-banksy-print/, 28 October 2017.
30 ‘New Verification Service for Art Salvaged from the Street’, Antiques Trade Gazettehttps://www.antiquestradegazette.com/news/2008/new-verification-service-for-art-salvaged-from-the-street/, 5 September 2008.
31 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 294.
32 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 294.
33 Pest Control Office https://pestcontroloffice.com/.
34 ‘Welcome to Authentications,’ Pest Control Office https://pestcontroloffice.com/.
35 Will Ellsworth-Jones, Banksy: The Man Behind the Wall (Aurum Press, 2012) 286.
36 William Landes and Richard Posner, ‘Trademark Law: An Economic Perspective’ (1987) 30 Journal of Law and Economics 265–309.
37 This search was conducted using TMVIEW on 2 June 2022. The results were yielded using the search term ‘Pest Control Office Limited’ in the ‘Applicant name’ field.
38 EU Trade Mark Number 017981629 (Laugh Now), which was also referenced in the introduction was cancelled in 2021, but an appeal is now pending, and so its status is showing as ‘registration cancellation pending’.
39 See AU Trade Mark Numbers 2025771; 2025772.
40 See Trade Mark Numbers 012575155; 017981624; 017981637; 017981633; 017981636; UK00917981633; UK00917981624; UK00917981636 and UK00917981637.
41 ‘Love Rat: Banksy’ in MyArtbroker https://www.myartbroker.com/artist/banksy/love-rat/.
42 One notable example involved Stealing Banksy?, an exhibition held at the ME hotel in London in 2014. On this, and Banksy’s response to the exhibition ‘Banksy Calls the ‘Stealing Banksy?’ Auction ‘Disgusting’, Artnet News, https://news.artnet.com/art-world/banksy-calls-the-stealing-banksy-auction-disgusting-12092, 25 April 2014.
43 ‘THE ART OF BANKSY. A Visual Protest’, Medec https://www.mudec.it/eng/the-art-of-banksy-a-visual-protest/.
44 EU Trade Mark Number 012575114 remains on the register.
45 This mark was filed on 7 February 2014 and was registered on 29 August 2014 with respect to classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, 42. This mark remains on the register.
46 This trade mark was filed on February 7, 2014, registered on August 29, 2014, with reference to classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, 42. The trade mark has since been cancelled. See EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd.
47 RG 52442/2018 Pest Control Office Limited v 24 Ore Cultura s.r.l at [8].
48 For a summary see Enrico Bonadio, ‘Banksy Finally Goes to Court to Stop Unauthorised Merchandising, Dispute Saying Copyright is for Losers’ in The Conversation(25 February 2019) https://theconversation.com/banksy-finally-goes-to-court-to-stop-unauthorised-merchandising-despite-saying-copyright-is-for-losers-112390.
49 See RG 52442/2018 Pest Control Office Limited v 24 Ore Cultura s.r.l at [7] where the Court cited the Judgment of the Court (First Chamber) of 22 September 2011 in Interflora Inc. and Interflora British Unit v Marks & Spencer plc and Flowers Direct Online Ltd (22 September 2011, Case C-323/09) ECLI:EU:C:2011:604.
50 See RG 52442/2018 Pest Control Office Limited v 24 Ore Cultura s.r.l at [11–12].
51 For a discussion of this point and the case more generally see Eleonora Rosati, ‘Milan Court Partly Sides with Banksy in Interim Proceedings for Trade Mark and Copyright Infringement’ The IPKat, https://ipkitten.blogspot.com/2019/03/milan-court-sides-with-banksy-in.html, 2 March 2019.
52 See the arguments summarised in RG 52442/2018 Pest Control Office Limited v 24 Ore Cultura s.r.l at [4].
53 RG 52442/2018 Pest Control Office Limited v 24 Ore Cultura s.r.l at [5–6].
54 RG 52442/2018 Pest Control Office Limited v 24 Ore Cultura s.r.l at [5].
55 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd.
56 Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 36.
57 Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60.
58 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [8].
59 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [8].
60 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [7].
61 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [7].
62 Judgment of 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 44.
63 Judgment of 13/12/2012, T-136/11, Pelikan, EU:T:2012:689, § 27.
64 See EU Trade Mark Number 012575155.
65 This quote is taken from a statement issued by Banksy and reported in Sam Jones, ‘Spay Can Prankster Tackles Israel’s Security Barrier’ in The Guardian, https://www.theguardian.com/world/2005/aug/05/israel.artsnews, 5 August 2005.
66 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [10].
67 Banksy, Wall and Piece (Century, London, 2006).
68 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [3].
69 The prints are now sold out. See Gross Domestic Product: The Homewares Brand From Banksy, BanksyTM Thrower https://shop.grossdomesticproduct.com/collections/frontpage/products/banksy-thrower.
70 Banksy’s statement was quoted in various sources including Tom Ravenscroft, ‘Banksy Launches Range of Branded Merchandise to Maintain Custody of His Name’ in dezeen, https://www.dezeen.com/2019/10/02/banksy-merchandise-gross-domestic-product-pop-up-in-croydon/, 2 October 2019.
71 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [11].
72 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [12].
73 EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [15].
74 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd.
75 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [3].
76 ‘Laugh Now: Banksy’ in MyArtbroker https://www.myartbroker.com/artist/banksy/laugh-now/.
77 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [3].
78 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [3].
79 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [11].
80 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [12].
81 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [12].
82 EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [13].
83 For this discussion see EUIPO Cancellation Division, Cancellation No. 33 843 C (14 September 2020) Full Colour Black Ltd v Pest Control Office Ltd at [8]. Also see EUIPO Cancellation Division, Cancellation No 39 873 C (18 May 2021) Full Colour Black Ltd v Pest Control Office Ltd at [8]-[9].
84 Irene Calboli, ‘Overlapping Rights: The Negative Effects of Trademarking Creative Works), 52–78 in Susy Frankel and Daniel Gervais (eds) The Evolution and Equilibrium of Copyright in the Digital Age (Cambridge University Press, 2014).
85 The question of whether the concept of authorship implies human authorship has sparked a lot of debate. In the United States, the Copyright Office has recently confirmed that human authorship is a. prerequisite to copyright infringement. See Copyright Review Board, Second Request for Reconsideration for Refusal to Register a Recent Entrance to Paradise, https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf, 14 February 2002.
86 See EU Trade Mark Numbers 017981624; 017981637; 017981633 and 017981636, all of which have a status date of 20 September 2021.
87 Australian Trade Mark Number 2025771.
88 Australian Trade Mark Number 2025772. This application was filed in 2019 and accepted for registration in 2021.
89 As per the opposition details catalogued by IP Australia on Australian Trade Mark Search for Australian Trade Mark Number 2025771 and Australian Trade Mark Number 2025772.
90 See Trade Marks Act 1995 (Cth) s 41.
91 See Trade Marks Act 1995 (Cth) s 43.
92 See Trade Marks Act 1995 (Cth) s 58.
93 See Trade Marks Act 1995 (Cth) s 59.
94 See Trade Marks Act 1995 (Cth) s 62(b).
95 As per section 62A of the Trade Marks Act 1995 (Cth).
96 Productivity Commission, Intellectual Property Arrangements (Inquiry Report No 78, 23 September 2016) 381.
97 For more on the issue of trade mark clutter see Haiyang Zhang, Does Trade Mark Cluttering Exist in Australia? (IP Australia Economic Research Paper 07, June 2019). Further see Georg von Graevenitz Richard Ashmead and Christine Greenhalgh Cluttering and Non-Use of Trade Marks in Europe United Kingdom Intellectual Property Office 201548 (2015).
98 DC Comics v Cheqout Pty Ltd [2013] FCA 478; 299 ALR 110; 101 IPR 334.
99 Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519; 87 IPR 300.
100 On the idea of the law providing a performative space, through which issues of intent, authorship and authenticity can be explored, see Shane Burke, ‘Intellectual Property Law as Artistic Medium’ in Jani McCutcheon and Fiona McGaughey (eds) Research Handbook on Art and Law (Edward Elgar, 2020) 259–277 where the author discusses Richard Prince as an example.
Additional information
Notes on contributors
Amanda Scardamaglia
Associate Professor Amanda Scardamaglia is Acting Dean and Department Chair of the Swinburne Law School at Swinburne University of Technology. Her area of research is intellectual property law with a special focus on empirical and historical studies in trade mark law, branding and advertising. She is author of the books Colonial Australian Trade Mark Law: Narratives in Lawmaking, People, Power and Place and Printed on Stone: The Lithographs of Charles Troedel, which won the Victorian Premier’s History Award in 2020.