Banksy: a trademark protest – Milan Court partially rules out trademark infringement
On January 15, 2019, the Court of Milan partially ruled out the claim of trademark infringement in the context of urgent proceedings no. 52442/2018, filed by a company (“Applicant”) alleging to be responsible for the administration, management and protection of the rights of the anonymous English street artist operating under the pseudonym Banksy (“Artist”) against an Italian company (“Defendant”) that organized an exhibition dedicated to the Artist. The Applicant states to be exclusively responsible for verifying authorship of the Artist’s works, issuing authenticity certificates and authorizing his worldwide exhibitions. As such, the Applicant has registered and invoked during these proceedings the following European Union trademarks: (i) the word mark “BANKSY” (“Word Mark”); (ii) the figurative mark representing a “GIRL WITH A RED BALLOON”; and (iii) the figurative mark representing a “RAGE, THE FLOWER THROWER” (jointly the “Figurative Marks” and together with the Word Mark the “Trademarks”).
This dispute arose in connection with the Defendant opening the exhibition (the “Exhibition”), Banksy: a visual protest, dedicated to the Artist and held at the Mudec Museum of Cultures in Milan. The Exhibition, which had not been authorized by either the Applicant or the Artist, has been open since November 2018 and includes more than 70 of Banksy’s works.
In this context, the Applicant claimed that the Defendant (i) unlawfully reproduced the Word Mark in the title of the Exhibition, as well as in all promotional materials and publications related to it, in which the Figurative Marks representing the “GIRL WITH A RED BALLOON” and the “RAGE, THE FLOWER THROWER” had also been unlawfully reproduced; (ii) published an Exhibition catalogue and other printed materials that unlawfully reproduced the Trademarks; and (iii) sold merchandise, including but not limited to, “BANKSY” diaries, notebooks and cards, which unlawfully reproduced the Trademarks together with catch-phrases such as “invisibility is a superpower.”
Moreover, the Applicant grounded its trademark infringement claim on the exclusive rights set out in Article 9 (2) of Regulation (EC) no. 1001/17 (“EUTMR”), in light of the undue visual and conceptual predominance of the Word Mark in the Defendant’s promotion of the Exhibition, as well as of the slavish reproduction of the Figurative Marks (whose registration also covers cultural services such as exhibitions, printed materials and merchandise). The simple fact that, on the webpage dedicated to the Exhibition (hosted on the museum’s website), there is a disclaimer informing that the Exhibition has not been authorized by the Artist is, the Applicant argues, irrelevant, as this precaution would not be sufficient to eliminate the risk of confusion with the Applicant’s activity or of association between the latter and the activity carried out by the Defendant. In fact, the unauthorized use of the Trademarks in the context of the Exhibition, as described under point (i) above, would go beyond what the Defendant may be allowed under the descriptive use exception set out in Article 14 of EUTMR, which exhaustively lists the limitations of the effects of an EU trade mark. According to the Applicant, the Defendant’s use of the Word Mark exceeds the strict requirement for the description of the goods and services offered with the Exhibition.
Additionally, in light of the facts described above, the Applicant argues that the Defendant’s actions would further amount to confusing activities with respect to the origin of the Exhibition’s products and services, as well as amounting to professionally unfair practices, thus violating the provisions of Article 2598 (1) and (3) of the Italian Civil Code.
According to the Applicant, in addition to being prima facie unlawful, such conduct would also meet the condition of the danger in delay required by Italian law to grant interim measures in urgency proceedings, such as the precautionary injunction and the seizure of the challenged products relating to the case at hand.
The Defendant, on the other hand, put forward some peculiar and interesting defensive arguments. First, it noted that the Artist’s own activity shows his willingness to abdicate copyright on his works, insofar as they are permanently placed in public places (as is the case with street art), whereas the works shown in the Exhibition are reproductions of original works that have been created and sold by the Artist himself as standard figurative works. In this sense, the right to exhibit the reproduction of the latter’s works belongs to their owners, that is the parties who purchased them as individual pieces of art. Therefore, the right to display these works in the Exhibition is granted to the owners from whom, in the case at hand, the Defendant argues all relevant authorizations have been obtained. In conclusion, according to the Defendant, all challenged material would either reproduce the Artist’s works that are available in the public domain or whose rights have been transferred to the Defendant by their current owners.
Secondly, the Defendant challenged the validity of the Trademarks on the ground that, among other things, they have been registered in bad faith. Specifically, their registrations have been filed for purposes other than to distinguish (the Artist’s) goods and services. In fact, the Applicant did not prove to have used the Trademarks in any of the commercial activities within their registration classes. In short, according to the Defendant, the Applicant instrumentally registered the Trademarks to acquire exclusive rights not in the interest of exploiting them, but rather to obstruct third parties from doing so in carrying out (otherwise lawful) activities.
Thirdly, the Defendant argued that use of the Trademarks should be lawful, as they are exclusively aimed at satisfying a descriptive function in relation to the goods and services offered in the context of the Exhibition, in accordance with procedures that fully comply with fair commercial practices in the field of art exhibition.
Lastly, the Defendant argued in favor of the applicability of the free use exception set out in Article 70 of Italian Law no. 633 of April 22, 1941 (“Italian Copyright Law”), under which, according to certain specific conditions, third parties are exempt from obtaining authorization to use works protected by copyright. As such, the Defendant claimed that its unauthorized use of the Artist’s works in the context of the Exhibition catalogue should be lawful on the grounds that it contains critical essays and comments on individual pieces of the Artist’s works that are entirely pertinent to critical discussion and that the reproduction of the challenged works only happens on a minor scale, thus qualifying for the exception.
The judge in this case first reasoned that the invalidity of the Trademarks could not be assessed in the context of urgent proceedings since bad faith, on which this counterclaim was grounded, needs to be clearly demonstrated by taking into account all relevant factors including, among others, whether (i) the trademark applicant intended, knew or should have known that a third party employed in at least one European Member State, an identical or similar sign for an identical or similar good and/or service, which would likely be confused with the sign for which registration was sought; and (ii) the trademark applicant intended to prevent third parties from continuing to use that sign.
The judge then proceeded to differentiate between the use of the Trademarks in relation to the Exhibition’s promotional material and merchandise. With regard to the first, the decision issued by the Court of Milan in the case at hand illustrates how the Defendant’s conduct is not, in fact, unlawful by reason of the descriptive use made in accordance with the provision set out in Article 21 of Italian Legislative Decree no. 30 of February 10, 2005 (“Intellectual Property Code”), similarly to provisions now also set out in the EUTMR. The fact that the Exhibition is dedicated exclusively to the works of the Artist implies that the Defendant, as the organizer of the event, can legitimately use the name of the Artist to indicate to the public the subject of the Exhibition itself. On the contrary, what shall be subject to scrutiny by the Court is whether the specific method of using the Trademarks for promotional purposes, in both the title and the promotional materials for the Exhibition, can be considered compliant with the principles of professional fairness characterizing this field. The judge noted that highlighting the name of the Artist to whom the Exhibition is dedicated is normal practice in this particular field, also considering that the marketing communications created by the Defendant expressly indicated the lack of any authorization from the Artist.
Conversely, in assessing the lawfulness of the use of the Word Mark on the merchandise in question, which had no specific relation to the Exhibition, the Judge noted that the purpose of Defendant’s activity as the organizer of the Exhibition would be purely commercial and, as such, in conflict with the scope of the Trademarks’ protection which covers the same kind of goods sold in the context of the Exhibition.
Regarding the Exhibition catalogue, the judge excluded that the qualification of Banksy’s works as street art required consideration. As argued by the Defendant, the Exhibition, in fact, consisted of copies of works that had been marketed with the Artist’s authorization and acquired by private parties. As a matter of fact, according to Article 109 of the Italian Copyright Law, the transfer of a copy of a work does not imply the transfer of any economic exploitation rights in the work per se, unless otherwise agreed. Consequently, this decision highlights that the line of defense grounded in the quotation, criticism or review of works under the free use exception, as invoked by the Defendant, does not, in fact, apply to the case at hand. This is because similar reproductions of (fragments or parts of) works and their communication to the public are allowed only insofar as: (i) they are made for the purpose of criticism or discussion, and (ii) they do not conflict with the commercial exploitation of the original works.
Lastly, regarding the claim of unfair competition, the decision rejected the Applicant’s argument due to the lack of necessary scrutiny over the challenged behavior, which is required to prove that the latter is de facto contrary to the principles of professional fairness and is also likely to cause damage to the party advancing the claim. Regarding this case, the judge held that, it is unclear whether the Artist had transferred reproduction rights over his works to the Applicant acting as a managing company. Furthermore, the Applicant failed to demonstrate that the unauthorized reproduction of Banksy’s images by the Defendant would have been likely to cause damage.
 C-529/07, 11/06/2009, Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, accessible at http://curia.europa.eu/juris/liste.jsf?num=C-529/07.