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Who’s Laughing Now? Banksy’s Invalidated Trademark

Banksy’s Laugh Now graffiti predicted a role inversion. On Thursday, May 18th, the Cancellation Division of the European Union Intellectual Property Office (EUIPO) invalidated a trademark on the street artist’s image of a monkey wearing the sign “Laugh now, but one day we’ll be in charge.” This was the EUIPO’s second invalidation of a Banksy trademark in less than a year.

Banksy, Rage, Flower Thrower (2003). Image Courtesy of Lazinc

Back in 2014, Pest Control Office Ltd. a company that acts on Banksy’s behalf to maintain his anonymity, registered a trademark of the artist’s Rage, Flower Thrower graffiti. Because Full Colour Black, a British art licensing company specialized in the printing of street art, was determined to sell greeting cards illustrating Flower Thrower, the company challenged the registration claiming bad faith under Article 59(1)(b) of the EU Trade Mark Regulation. Full Black Colour argued that Banksy never intended to use the mark. Rather, it claimed that Banksy had registered it to maintain full control over the use of his images and to continue to grant regular copyright licenses. Full Black Colour demonstrated Banksy’s aversion to copyright law by referring to the artist’s public claim that “Copyright is For Losers©TM”.

On September 14, 2020, the Cancellation Division aligned with Full Black Colour and invalidated the artist’s trademark: “It must be pointed out that…[Banksy] cannot be identified as the unquestionable owner of such works as his identity is hidden; it further cannot be established without question that the artist holds any copyrights to a graffiti. The contested EUTM was filed in order for Banksy to have legal rights over the sign as he could not rely on copyright rights, but that is not a function of a trademark.”

Banksy, Laugh Now (2005). Courtesy Artsy

In the meantime, Full Black Colour had filed a second complaint before the EUIP to invalidate Banksy’s trademark of Laugh Now on the same legal grounds. On May 18, 2021, the artist argued that the claimant had not provided sufficient evidence to prove bad faith. Banksy referred to the Court of Justice of the European Union’s C-371/18 judgement (2020), in which the Court had held that invalidation for bad faith is appropriate when the trademark was filed “with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties or with the intention of obtaining…an exclusive right for purposes other than those falling within the functions of a trade mark.” (§74). Banksy also raised the interesting  argument that, under Article 11.1 of the EU Charter of Fundamental Rights, which protects freedom of expression, he could not lose the right to file a trademark on the basis that he had previously claimed that copyright is for losers. Moreover, Banksy explained his comment “was clearly ironic as it was accompanied by both a copyright and trade mark symbol.” Finally, the artist recalled that in Creative Foundation v. Dreamland Leisure Ltd. (2015), which concerned Banksy’s entitlement to copyright protection as a street artist, the English High Court’s Chancery Division held that trademarks and copyrights are not exclusive. Banksy argued that his refusal to copyright Laugh Now did not disqualify his trademark registration.

Once again, however, the EUIPO aligned with Full Black Colour. The Cancellation Division found that Banksy did not use any of his registered marks as trademarks. Instead, it held that his trademarks were an attempt to monopolize images on an indefinite basis, and that his EU trademark was filed to circumvent copyright law, amounting to bad faith. Who’s laughing now?

Amineddoleh & Associates Featured in Digital Guardian

48441625 - innovation.

48441625 – innovation.

Amineddoleh & Associates LLC was featured in Digital Guardian this morning. In the feature, Leila discusses the best way to secure intellectual property against loss or compromise. You can read her advice, along with perspectives from others, online: https://digitalguardian.com/blog/how-to-secure-intellectual-property#Amineddoleh

Kapoor, Klein, and the Ownership of Colors

A few weeks ago, artist Anish Kapoor posted a photo to Instagram of his middle finger swathed in the “World’s Pinkest Pink” paint pigment with the caption “Up yours #pink”. The photo was a pointed reply to artist Stuart Semple, who had expressly banned Kapoor from acquiring the pink pigment and requiring online purchasers of the color to sign a legal declaration that they were not affiliated with Kapoor in any way.

International Klein Blue

Semple’s efforts to ban Kapoor from accessing his pigments reflect his continued displeasure with Kapoor’s own monopoly of a color: Kapoor is the only artist allowed to use “Vantablack,” a material developed by British company Surrey NanoSystems and purportedly the darkest material in existence. Surrey NanoSystems’s decision to grant exclusive rights to the artistic use of Vantablack to Kapoor was openly condemned by many other artists like Stuart Semple, who wished to use the Vantablack in their own works or believe that colors should be freely accessible to all artists.

The exchanges between Semple and Kapoor reignited a longstanding debate of whether someone can exclusively “own” a color. In most countries a color can be “owned” as a trademark, just like any other logo, design or word. In the US, a color may qualify as a trademark if that color does not serve a functional purpose (such as the colors orange and yellow for safety equipment) and if the color has acquired a “secondary meaning” that identifies that color with a particular brand or source rather than the product itself.

But trademark protection of colors is often limited to very specific commercial purposes and uses. We are all familiar with Tiffany & Co.’s distinctive “Tiffany Blue,” but its trademark rights only apply to boxes, handbags, and catalogue covers. “U.P.S. Brown” applies only to its delivery services, and 3M’s canary yellow color is trademarked only for its popular Post-its.

One of the most famous cases involving the limitations of trademark ownership of a specific color was the dispute between shoe designer Christian Louboutin and Yves Saint Laurent after YSL launched a line of shoes that included a red shoe with a red sole. In 2012, the New York Court of Appeals concluded that Christian Louboutin’s trademarked glossy red-lacquered “outsoles” were only protectable where the red outer sole contrasts with rest of the shoe, and YSL’s shoes, which were entirely red, did not violate Louboutin’s trademark.

So then, how would someone be able to prohibit everyone except one person from using a color like Vantablack?  The answer is likely in patent law, which permits a patent owner to exclude anyone from making, using, or selling the patented invention. Unlike trademark law, a patent does not necessarily protect ownership of the color itself. Rather, a patent grants to the owner exclusive ownership rights for the underlying invention, process, or composition that creates the color.  It therefore follows that Surrey Nanosystems, as owner of the patents for Vantablack material—not the color itself— would have the right to exclude all artists except Anish Kapoor from using it.

There is a similar common misconception that French artist Yves Klein patented his famed matte blue color known as “International Klein Blue” or “IKB”. In fact, Klein secured a French patent in 1960s for the unique process he developed with art supplier Edouard Adam in Paris to achieve IKB. Although many—from major fashion designers to the Blue Man Group— have attempted replicated IKB, the only places where one can access the “authentic” IKB are Yves Klein’s artworks and the original art supplier in Paris, where the patented process to attain IKB is still used.

Perhaps like the Blue Man Group’s replication of Yves Klein blue, we can look for Semple to create his own “World’s Most Blackest Black” pigment in the future.  But in the meantime Stuart Semple has released —and already sold out of—a new pigment called “the World’s Most Glittery Glitter,” which “anyone apart from Anish Kapoor can have,” continuing his mission to #sharetheblack.