Banksy went to Court and partially won.

 “Copyright is for losers” once wrote the secretive street artist ironically, however, a few weeks ago Pest Control (the company responsible for managing Banksy’s artworks) sued an Italian company for trademark infringement.

The Italian company 24 Ore Cultura organized an exhibition – The Art of Banksy. A visual protest – for Milan’s Mudec Museum, without having obtained any authorization from the artist, as disclaimed on the website.

The event opened in November 2018 and runs until April 2019.

The exhibition features 70 authentic Banksy prints and paintings, and its gift shop was selling a large variety of merchandise promoting Banksy imagery, including notebooks, postcards, bookmarks and diaries signed with the artist’s work.

Pest Control is entitled to authenticate Banksy’s artworks, and it is the owner of the EU trademarks including the word mark “Banksy” and the figurative trademarks representing two iconic works: Girl with Balloon and the Flower Thrower.

At the end of 2018, Pest Control took action against the company 24 Ore Cultura to repress the unauthorized use of Banksy’s registered trademarks as well as the removal from the commerce of all merchandising.

In January, a provisional decision by the Court in Milan[1] ordered the Mudec Museum to stop selling the merchandise which reproduced Bansky’s art but ruled against Pest Control’s request that the exhibition ceases to use Banksy’s work in its promotional materials.

In fact, the Milan judge noted that while the use of Banksy’s name and art on merchandise constituted trademark infringement, he denied any tort with regards to the promotional material being the Banksy’s art on such material informative of the show’s contents.

The Court ruled that the use of the artist’s name and the figurative signs in the context of communicating the content of the exhibition is a descriptive use of those trademarks and it is non-infringing.

A different conclusion was reached regarding the merchandise: the use of the name “Banksy” in connection to merchandising without any specific relation to the exhibition was considered illicit, given the evident intention was purely commercial and in conflict with the scope of the trademarks’ registrations.

Concerning the catalogue which also contains the reproductions of Banksy’s works, including “Girl with Balloon” and “the Flower Thrower”, the judge excluded the application of the copyright in street art seeing that the show in Milan consists of copies of Banksy’s works acquired by private parties and commercialized with the authorization of the artist.

In this context, what applies is Article 109 of the Italian Copyright Act, which provides that a transfer of a copy of a work does not imply, unless otherwise agreed, the transfer of any economic rights on the work, including the reproduction.

The Court did not confirm the existence of any agreements to the contrary. However, the documentation produced has not been sufficient to determine whether the applicant was the holder of the relevant economic rights, or whether the artist had reserved them to him.

In the present case, Pest Control could not prove unequivocally that it would be entitled to enforce Banksy’s economic rights and to have suffered damages from the unauthorized reproduction of Banksy’s images.

In conclusion, if the artist wants to fight regularly and successfully against the unauthorized exploitation of his work, he will need to accept the market logic to obtain the basis for complete legal protection and to show stronger evidence of his brands being used in the market.

A way to do so could be by transferring to the company Pest Control all the economic rights on the work, including the right of reproduction or revealing his identity, but it seems he doesn’t want to remove the aura of mystery surrounding him, which is the core of his artistic manifesto.

Cecilia Carbonari

 

[1] Order of the Milan Court n. 52442/2018 R.G.