The IP complications of being Banksy
Here’s a question. What is the situation where the creator of a work is a person who wishes to enforce their rights in the work, but who does not want to reveal their identity? The author known as “Banksy” is just such a person.
Banksy, real name unknown, is a street artist who first came to notice in the 1990s in Bristol in the UK. His work is graffiti, in that it is painted on a wall or other public surface but it’s not random graffiti. Rather, his works are satirical, sometimes subversive and provide a commentary on current social and political issues. Most recently, seven Banksy murals appeared in the Ukraine. So famous is Banksy, that people regularly try to steal the murals, which are worth millions, by cutting off a section of the board or plaster.
So, as far as subsistence and ownership of copyright is concerned, there seems to be little argument that copyright subsists in Banksy’s works and that Banksy is the owner of the copyright. The problem is that it may be very difficult (or at least challenging) for Banksy to enforce his copyright rights as long as he remains anonymous.
Banksy appears to have licensed his rights to an affiliated company called Pest Control Office Limited. According to its website, Pest Control is the office that handles all the paperwork for Banksy and is the only entity authorised to issue certificates of authenticity and sell his works,” although the website makes it very clear that there is “currently nothing available”.
Pest Control may be the exclusive licensee of the copyright in Banksy’s works and might even be authorised to take actions on his behalf. However, in relation to copyright, it’s likely that a defendant would put the licence, ownership and subsistence of copyright in issue and press for details of the author and the creation of the work in question. Another stumbling block for a copyright infringement action.
Thinking laterally, Pest Control filed trade mark applications for images of his artworks in a number of jurisdictions around the world. Full Colour Black Limited has taken action to have them cancelled, including in Australia. According to its website, Full Colour Black “is a contemporary art licensing company specialising in the commercialisation of world famous street art.” Not surprisingly, some of the street art it seeks to commercialise are the murals of Banksy.
Full Colour Black successfully had some of Pest Control’s registrations cancelled in the EU on the ground of bad faith. Full Colour Black argued that Pest Control never intended to use the marks as a badge of origin. In October 2022, one of “these decisions was overturned. The 5th Board of Opposition said that just because a work could be protected by copyright didn’t mean that it couldn’t also be a trade mark, that is act as a badge of origin. In relation to bad faith, the 5th Board of Appeal considered that even though the work was made publicly available as graffiti and no steps were taken to secure copyright (in those countries where a positive step needed to be taken), it didn’t mean there was never any intention on the part of Pest Control to use the work as a trade mark.
In Australia, Pest Control has a trade mark registration for BANKSY in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, 42 for a wide range of goods and services including education and art. In 2019, Pest Control applied to register two of Banksy’s artworks in the same classes. Application no. 2025771 depicts the famous flower thrower and application no. 2025772 depicts the girl with a balloon. These two applications were accepted but have been opposed by Full Colour Black. The two oppositions are waiting on a hearing date to be set.
Whether Banksy will ever come out of the shadows remains to be seen. For those who think they know who Banksy is, we will leave you with words from the Pest Control Q & A page: “Great, Banksy hugely appreciates any suggestions and is currently struggling with that very question. Please write ‘existential crisis’ in the email heading.”
We look forward to reporting on the outcome of the Australian decisions in due course.