Intellectual Property

Take It To the Bank(sy): Why Works Of Art As Trademarks Are Not As Simple As You Think

It seems ironic that an artist known to buck the system appears to be using that very system to assert rights.

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(Photo by Chris J Ratcliffe/Getty Images)

I admit a certain admiration for the anonymous England-based street artist known as “Banksy” — the unique style of street art combined with the artist’s political activism spiked with a healthy dose of dark satire is something to behold.  Usually fixing his/her works on publicly visible surfaces and walls as well as physical prop pieces made by the artist, Banksy has become renowned the world over. This is not ordinary street artist — in 2018, the artist’s work Balloon Girl was auctioned at Sotheby’s for over $1.4 million dollars; however, once the auction ended with the strike of the gavel, an alarm sounded the work and it was partially shredded by a mechanism hidden within its frame (oddly, probably making the work even more valuable).  Now that is a statement.  This is also an artist that famously stated that “copyright is for losers.”  Notwithstanding this position, the artist doesn’t seem to feel that way about trademarks, and it is no less a sight to behold.

Here’s some background: Banksy recently opened up a storefront in London called “GrossDomesticProduct.”  Oddly, this storefront is not designed to be a traditional brick-and-mortar operation.  In fact, it is designed to solely display products depicting the artist’s works for purchase online.  That’s right — the artist literally has a shop window to display products that cannot be bought there, but rather, must be purchased online.  Why?  Apparently, Banksy is embroiled in a trademark dispute with Full Color Black in the United Kingdom, a small greeting card company that sells greeting cards depicting the artist’s works. Full Color Black is challenging the artist’s trademark based upon the artist’s Flower Thrower work. In fact, Banksy has a number of trademark registrations in the UK (registered through an entity (Pest Control) that authenticates his art on the artist’s behalf), an interesting proposition for an artist who seems to disparage intellectual property rights (well, at least copyrights). As trademarks require use in commerce to maintain trademark rights, such a storefront seems to be a rather thinly veiled effort to show use for the trademark at issue.

For those of you who have followed my writings regarding trademarks, it should come as no surprise that this tactic is tenuous at best.  Banksy’s artwork is depicted on many different goods throughout the world — goods that are not manufactured on behalf of or otherwise sold by (or on behalf of) Banksy.  As trademarks are designed to help distinguish the goods and services from those of another and to designate origin, such third-party products do not support the artist’s trademarks as such sales do not inure to the benefit of the artist as a trademark licensor (as no such licenses exist).  Interestingly, Full Color Black apparently offered to pay a license fee to the artist (ostensibly under copyright); however, the artist apparently declined (likely in no small part to the “copyrights are for losers” position). This got me thinking about artworks as trademarks, but not for the reasons you may think.

From a trademark perspective, there is no reason that artists couldn’t register trademarks in their artwork, but it is not a given.  As stated above, so long as the artwork can be identified with the artist and otherwise meets the criteria to function as a trademark, it is registrable.  That said, the mark must indicate the artist as the source and function to distinguish the artist’s products from others as well — not something likely for all an artist’s works.  To the extent the artwork is an original work fixed in a tangible medium, it is of course also copyrightable.  As such, the artwork can function as both and such rights are not mutually exclusive.  When it comes to works of art, copyright is the most common IP right to enforce because it attaches upon fixation and, quite frankly, is designed to protect such unique artistic expression. With respect to Banksy, however, it seems that the artist has decided to take a different tack (no surprise there), focusing instead on trademark law.  Whatever the reasons (the biggest of which may be that the artist would need to reveal his/her identity in a copyright infringement action), the artist is relying on trademarks to “protect” his/her works.

Aside from the issues of origin and use in commerce, there is another difference between copyright and trademark with respect to works of art that bears mentioning — term of protection.  In the United States, the United States Copyright Office FAQ provides some guidance:

The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication. As a general rule, for works created after January 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years. For an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first.  For works first published prior to 1978, the term will vary depending on several factors.

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The U.S. Copyright Office Circular 15a provides even more clarification on the duration of copyright, but the point here is that there is a definite (albeit long) statutory term for protection.  Trademarks, on the other hand, can enjoy trademark protection so long as the trademark remains in use (and with respect to registered trademarks, so long as evidence of such continued use is provided to the appropriate trademark registration office, such as the USPTO for federally registered trademarks in the U.S.).  That said, copyrights and trademarks in works of art are not mutually exclusive — these IP rights simply protect different things (protectable expression for copyright; commercial indicia for trademarks).  As a result, an artist can obtain protection under both copyright and trademark law so long as the requisite elements and requirements for each are met.

It seems ironic that an artist known to buck the system appears to be using that very system to assert rights, but it is understandable — Banksy is painted into a corner regarding the artist’s copyright position (with an arguable waiver of such copyrights in and to such works) and existing trademark use and registration requirements.  Trademark owners have a duty to police their marks, but it will be interesting to see how this dispute plays out. From my perspective, there is a real possibility of non-use that places such registration(s) in jeopardy.  In any event, however, we can probably count on the artist to incorporate this experience into future artistic expression.  For the rest of us, let this matter serve as a warning to artists: don’t get painted into a corner the it comes to trademarks in works of art — there’s a lot more to it than meets the eye.

Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

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