BANSKY (THE UNKNOWN) IS A REGISTERED TRADEMARK
The Court of Milan recently ruled on the protection of works by the street artist known by the pseudonym Banksy, whose identity, as many may know, remains unknown.
The proceedings were initiated by Pest Control Office Ltd, which claimed to be the entity responsible for protecting the artist’s rights, handling the sale of his works and organizing exhibitions. Pest Control Office is also the owner of several trademarks (“Banksy”) as well as distinctive marks representing some of his most famous works, such as the girl with the red balloon and the flower thrower. Pest Control therefore filed a lawsuit against 24 Ore Cultura s.r.l., alleging trademark infringement by Il Sole 24 Ore, which organized the exhibition “The Art of Banksy: A Visual Protest.”
First, the title of the exhibition allegedly infringed on Basnky’s rights to the same registered trademark. Similarly, the infringement allegedly occurred through the use of images of the little girl with the red balloon and the flower thrower in the exhibition’s promotional materials.
On the one hand, the Court found that the use of the signs in question on the exhibition’s merchandise was unlawful, as it constituted mere commercial use for the promotion of generic consumer products unrelated to the exhibition, and therefore could not be considered a lawful descriptive use of another party’s trademark.
On the other hand, however, it held that the use of the Banksy mark and the marks corresponding to the aforementioned works in the exhibition’s promotional materials constitutes a lawful use of another party’s trademark, as it serves a purely descriptive purpose with respect to the exhibition itself.
The Court also rejected the defendant’s argument that the owners of the exhibited Banksy works (i.e., the multiples of his street art that he had marketed) had expressly granted the defendant the right to reproduce those works.
In fact, according to copyright law, “the transfer of one or more copies of the work does not, unless otherwise agreed, entail the transfer of the rights of use governed by this law.” In this context, the judge notes, “case law has long established that even the photographic reproduction of a work of figurative art in an exhibition catalog constitutes a form of commercial use of the pictorial work and falls within the exclusive right of reproduction reserved to the author.”
Notwithstanding the foregoing, the Court ruled that the unauthorized reproduction of the works in the catalog did not constitute unfair competition against the defendant. Such a claim, in fact, requires not only unlawful conduct, but also that such conduct actually cause harm to the competitor alleging the infringement.
Having therefore established that the only violation attributable to the defendant is the use of the plaintiff’s trademarks on merchandising products, the Court prohibited the further sale of the merchandising items in question, imposed a penalty, and ordered the defendant to pay a portion of the legal fees incurred by the plaintiff.