Can an anonymous work be protected as a trademark?

Gianpaolo Todisco

According to a recent decision of the EUIPO (Intellectual Property Office of the European Union) it would seem not to be the case: the rejection by the Office of the request for trademark cancellation made by the Full Color Black (manufacturer of greeting cards).

This all started when, in 2014, Banksy decided to register his famous work "The Flower Thrower" as a trademark with the European Union; it is a mural made in Jerusalem in 2005 and still wants to remember how wars and battles should be fought with the flower of hope and abandon violence. In accordance with his line of action characterized by irony, provocation and marketing strategies, the famous British writer has registered the work as a trademark to protect any products distinguished by the famous work.

Howeverthe British greeting card company Full Colour Black, sued by Banksy for counterfeiting, claimed that the trademark should be cancelled because it never intended to use it on any products. This was the argument used by Full Color Black's attorney to exonerate her from the 2018 copyright infringement charge. Well, with the decision of 14 September 2020 the EUIPO rejected the artist's request because, according to the Community Trademark Regulation, in order to claim its right on those images it is necessary to leave the anonymity.

To renounce anonymity, however, would damage the aura of mystery that surrounds him. Banksy has the opportunity to appeal within two months of the ruling, but the legal discipline on the matter makes it clear that the Writer risks losing the protectability of all other works if he chooses not to disclose himself.

UNKNOWN BANSKY IS A REGISTERED TRADEMARK.

The Court of Milan has recently expressed itself on the protection of the works of the street art artist known as Banksy, whose identity is, as many will perhaps know, unknown.

 The case was commenced by Pest Control Office Ltd which is the company that protects the artist's rights. Pest Control Office is also the owner of certain trademarks ("Banksy") but also of the distinctive signs that represent some of his most famous works, such as the little girl with the red balloon and the flower launcher. Pest Control therefore sued 24 Ore Cultura s.r.l. complaining the infringement of its trademark rights by the Sole 24 Ore that organized the exhibition “The art of Banksy. A visual protest ".

 According to Pest Control, the title of the exhibition violated Basnky's rights on the same registered trademark. Likewise the violation would have been perpetrated through the use of images of the little girl with the red balloon and of the flower thrower in the promotional material of the exhibition.

 On one hand, the Court considered the use of the signs in question on the merchandising of the exhibition to be unlawful, as a mere commercial use for the promotion of generic consumer products without relevance to the exhibition, and therefore not considered as a legitimate descriptive use of the other people's brand.

 On the other hand, instead, the Court considered that the use of the Banksy sign and those corresponding to the aforementioned works in the promotional material of the exhibition constitutes a lawful use of the brand of others, having a merely descriptive purpose of the exhibition itself.

 The Court also rejected the defendant's defense based on the fact that the owners of the exposed Banksy works (aliases of the multiples of his street art works sold by him) had expressly granted the defendant also the right to reproduce these works.

 In fact, according to Italian copyright law, "the transfer of one or more copies of the work does not matter, unless otherwise agreed, the transmission of utilization rights, ". In this context, the Court stated that, "Case Law has already made clear for some time that even the photographic reproduction of a figurative work of art in an exhibition catalog represents a form of economic use of the pictorial work and falls within the exclusive right of reproduction reserved to the author ”.

 Notwithstanding the foregoing, the Court ruled that unauthorized reproduction of the works in the catalog also constituted unfair competition to the detriment of the defendant. This case, in fact, requires not only the unlawful conduct, but also that this can actually cause damage to the competitor who complains about the offense.

 Having therefore ascertained that the only offense attributable to the defendant is the use of the appellant's trademarks on merchandising products, the Court inhibited the further marketing of the merchandising products, with the setting of a penalty sentencing of the defendant to pay part of legal fees incurred by the Recurrent.