Banksy’s Girl with Balloon

On 14 January the IP Court of Milan issued an interesting precautionary order concerning the protection of the works of the street art artist known under the pseudonym Banksy, whose identity is unknown. This choice by the artist not to reveal himself to the public, and not to directly take legal action (either in person or through an attorney) to protect his rights, apparently had repercussions on the judgment, in which the company that acted to protect his works only achieved a partial, and indeed limited, grant of its claims.

The proceedings were initiated by Pest Control Office Ltd (the “claimant”), who claimed to be exclusively entrusted with the management and protection of the artist’s rights, for which they handled the sale of the works and the realisation of exhibitions. In this capacity and for these purposes, they registered as a trademark not only the name “Banksy” but also some of his most famous works: The Girl with Balloon and The Flower Thrower. Pest Control therefore acted in court against 24 Ore Cultura s.r.l. (the “defendant”) claiming trademark infringement and unfair competition in relation to the exhibition “The art of Banksy. A visual protest” organised in Milan by the defendant. According to the applicant:

  • the title of the exhibition, in which the name Banksy would have been emphasised, would have infringed its registered trademark on the same name;
  • a similar infringement would have been determined by the use of the images of The Girl with Balloon and The Flower Thrower in the promotional material of the exhibition;
  • the activities of the defendant also constituted unfair competition to the detriment of the claimant, as they were likely to create confusion with the latter’s activity (Article 2598(1) Civil Code) and were professionally unfair as they were put in place through the violation of copyright laws and the Advertising Self-Regulation Code (Article 2598(3) Civil Code).

In the decision in question the President of the Milan IP Court, Mr Marangoni, first of all dismissed the defendant’s defence according to which the trademarks enforced by the claimant would have been null as they had allegedly been registered in bad faith for the sole purpose of obstructing lawful activities of third parties, and not in order to distinguish products or services provided by Pest Control. The Judge stated that this “appears difficult to be ascertained in preliminary proceedings, given that, although the documents on file provide limited evidence of the actual use of said signs by the claimant in the specific function of distinctive signs, that particular hypothesis of trademark invalidity requires clear and indisputable evidence of the existence of the specific intent to hinder competition and not to use the signs in their distinctive function”. This evidence, the Judge continued, was not provided in this case.

On the other hand, the Judge stated, the use of the Banksy sign and of signs corresponding to the aforementioned works in the promotional material of the exhibition constituted a lawful use of the claimant’s trademarks pursuant to Article 21 IP Code, as it had the purpose of describing the exhibition itself. This did not appear to be detrimental to the claimant, given that the defendant had explicitly stated, in its advertising materials, that the exhibition was not authorised by the artist and therefore neither he nor his assignees had taken part in its organisation.

The Judge had a different opinion regarding the use of the signs in question on the merchandise of the exhibition, which was considered illicit as it amounted to commercial use aimed at the promotion of generic consumer products not relating to the exhibition and therefore could not be considered as a lawful descriptive use of the claimant’s trademark.

Finally, the decision focused on the marketing of the exhibition catalogue, which according to the claimant allegedly constituted unfair competition to its detriment for professional unfairness pursuant to Article 2598(3) Civil Code. It was precisely in this respect that the Judge focused on the rights that could be enforced by Pest Control, which lead to the dismissal of the relevant claim.

The Judge first noted that the actual scope of the rights granted by Banksy to the claimant had remained substantially undetermined, as the claimant had failed to duly indicate the exploitation rights over the artist’s works that would have been granted to them. This, the Judge specified, would have been critical if Pest Control had enforced the copyrights on the works in question, but it did not prevent the Court from ascertaining the existence of a competitive relationship between the parties which entitled Pest Control to act for unfair competition against the defendant. In fact, the claimant actually appeared to be the person who had the power to authorise the exhibition of the artist’s works, especially considering that: they were able to register the above trademarks without the artist’s opposition; they authorised the use of the artist’s works by leading museums in Europe (e.g. The Louvre and The British Museum); in 2015 they took care of the construction of a temporary park that displayed works by the artist. They therefore operated in the same field of activity as the defendant throughout Europe including in Italy.

Moving on to the evaluation of the defendant’s behaviour, the Judge firstly dismissed its claim that the owners of the Banksy works exhibited (official replicas of his street art works) had expressly granted the defendant the right to reproduce such works. In this regard, the decision found that it had not been proved that the owners of the works had obtained from the artist, together with the ownership of the work, also the right to reproduce the same referred to in Article 13 Copyright Law, which right had therefore to be considered as still belonging the artist. According to Article 109 Copyright Law, in fact, “the transfer of one or more copies of the work does not imply, unless otherwise agreed, the assignment of the exploitation rights regulated by this law“. In this context, the Judge stated, “the case-law has already made clear for some time that even the photographic reproduction of a figurative work of art in an exhibition catalogue represents a form of economic exploitation of the pictorial work and falls within the exclusive right of reproduction reserved to the author”.

The judge also dismissed the defendant’s defence according to which the publication of the works in the catalogue in reduced scale would have been lawful pursuant to Article 70 Copyright Law, according to which “the summary, quotation or reproduction of passages or parts of the work and their communication to the public are free if they are made for the use of criticism or discussion, within the limits justified by these purposes and provided they do not amount to competition to the economic exploitation of the work“. Indeed, the Judge noted, this provision constitutes an exception to copyright protection, and cannot be applied beyond the cases expressly provided for. “This implies that the complete reproduction of the pictorial work, although obviously on a smaller scale than the original, is not covered by this provision, since it is not possible to identify in the catalogue in question an exclusive or prevalent critical-cultural purpose. In this regard it is relevant to consider the absolute prevalence of the images of the artist’s works with respect to the much more limited part of the text accompanying these illustrations“. Furthermore, the decision continues, “the potential competition by this catalogue with the author’s exploitation rights to his original work cannot be denied, given that the former would compete directly with similar publications authorised by the author or – due to the presence of numerous images of the artist’s works – with publications not representing mere catalogues but illustrating his artistic activity in general“.

Notwithstanding the foregoing, however, the Judge concluded that the unauthorised reproduction of the works in the catalogue did not amount to unfair competition to the detriment of the defendant pursuant to art. 2598(3) Civil Code. This, the Judge stated, requires not only an unlawful conduct, but also the latter’s ability to cause damage to the complaining competitor. In the case at issued, as stated above, the claimant had acted not on the basis of their ownership of the economic exploitation rights over the artist’s works, but on the basis of their own trademarks and rights to fair competition, and the documentation filed in court did not find that they had obtained from the author the right to reproduce – or allow third parties to reproduce – such works. The claimant’s business as proved in the proceedings only related to the exhibition of works of the artist.

In this context, the Judge concluded, “there are no significant elements to believe that the artist has not reserved for himself the right to reproduce the works (…). It must therefore be concluded that the reproduction of the images of the artist’s works in the contested catalogue – even though unduly carried out by the defendant does not in fact interfere with the commercial prerogatives of the appellant, which has not been assigned any right of reproduction of the same images that may be considered effectively affected by the activity of the defendant”.

Having therefore ascertained that the only offence attributable to the defendant was the use of the claimant’s trademarks on merchandise, the Judge moved onto the evaluation of the “danger in delay” required for the granting of the interim injunction. This requirement was considered to be met due to the fact that the marketing of those products had a potential depressive effect on the distinctiveness of the registered trademark: “the presence on the market of products bearing the same trademark and not attributable to its legitimate holder would determine at least an undoubted dilution of its distinctiveness, which would not be fully recoverable through a mere economic compensation“.

In light of the foregoing, the Judge enjoined the defendant from further marketing the merchandise in question, setting a penalty for any product sold and ordering the defendant to pay part of the legal expenses incurred by the claimant (but not all of them, due to the dismissal of many of the claimant’s claims).