Enrico Bonadio, Author at The Fashion Law

Banksy’s Battle with Guess: How Does Anonymity Affect His Legal Rights?

November 28, 2022 - By Enrico Bonadio

Fresh from providing war-torn Ukraine with a series of murals, Banksy recently used his Instagram account to channel frustrations with a more domestic (read: legal) concern. The elusive artist has accused fashion retailer Guess of exploiting his artwork without consent. He posted a picture of the brand’s flagship store, which showcased clothes incorporating some of his iconic pieces (including the Flower Thrower and Flying Balloon Girl), and invited shoplifters to attack it, saying, “They’ve helped themselves to my artwork without asking, how can it be wrong for you to do the same to their clothes?”

The fashion company has justified the new collection by emphasizing that it was “inspired by Banksy’s graffiti” and that they had legally acquired rights over Banksy’s art. It is very unlikely that Banksy, or his organization Pest Control, has ever authorized an external company to manage the copyright over his art. This is something can be inferred from Banksy’s own website, which first claims that “neither Banksy or Pest Control license the artist’s images to third parties” and then confirms that “Banksy doesn’t do merchandise.”

Some may argue that Banksy’s latest move is hypocritical, emphasizing what the artist himself noted in the introductory page to his bestselling 2005 book, Wall and Piece: “Copyright is for losers.” But a statement made almost 20 years earlier does not deprive the artist of the exclusive rights over his art. To allow otherwise would unduly restrict his freedom of expression.

As explained last year by the European Union Intellectual Property Office (“EUIPO”) in the legal proceedings that led to the cancellation of one of Banksy’s trademarks, one cannot lose the right to a brand because of anti-copyright statements made in the past. This was also highlighted by a decision of the same office a few weeks ago, which reversed a previous ruling invalidating Banksy’s trademark of the artwork Laugh Now But One Day We’ll Be In Charge. It was noted that anyone is free to express publicly their view and opinions, and that Banksy’s old statement –

“Copyright is for losers” – does not mean that copyright should not be enforceable, as it was, of course, an ironic comment.

A strategic change from team Banksy

Artists like Banksy can be anti-establishment and still take legal action to protect their intellectual property. And this is exactly what Banksy and Pest Control have started doing. They have been planning a trademark filing strategy in several jurisdictions and even won a case of unauthorized merchandising in Italy in 2019, while leaving people free “to use Banksy’s images for non-commercial, personal amusement.”

Another issue is anonymity. Some commentators have claimed that Banksy would need to reveal his identity to be able to start a copyright suit, something the mysterious artist understandably wants to avoid. But the idea that anonymous (or pseudonymous) artists cannot bring legal actions while keeping their real identity confidential is debatable. Many laws around the world, including in the US and UK, and the main international treaty on copyright (the Berne Convention), clearly protect anonymous works.

Moreover, several copyright offices allow the registration of anonymous works – the US copyright office being one of them. And in many countries, it is possible to start legal actions while remaining anonymous or pseudonymous if certain tests are met – the aim being to protect the complainant’s privacy and personal data.

The EUIPO stressed this point during the recent proceedings over Banksy’s trademark, saying: “As to Banksy’s need to stay anonymous, it must be stated that in proceedings a party may request to a certain extent to be treated in a confidential way in order to limit, to the extent that it is possible, the dissemination of his personal data, in case this is justified.”

Banksy’s anti-establishment ethos

Not only is copyright compatible with anti-establishment messages, it could also become the legal tool to maintain those messages. Copyright allows artists to object to and prevent what many of them do not accept: a commercial exploitation of their art which is antithetical to their message. Resorting to copyright laws may protect the reputation of artists who, like Banksy, don’t want to be associated with marketing and profit-oriented activities.

There have recently been several cases where street and graffiti artists have brought copyright infringement claims precisely because they didn’t want to be linked to corporate and consumerist messages. This is the case of US artists Dash Snow, Ahol, Revok and Rime, among others. But can Banksy be accused of selling-out because of his recent IP enforcement strategy?

As copyright regimes are neutral to the messages conveyed by the works, this accusation is weak. Banksy could earn much more money by regularly licensing his copyright and trademarks to commercial entities. He instead chooses to license his art royalty-free to charity organizations. One of these is the London-based Loves Welcome, a creative social enterprise aiding refugee women. Also, Banksy often donates proceeds from sales of his canvases to non-profit organizations. This happened in 2021 when the COVID-themed painting Game Changer, depicting a young boy playing with a superhero nurse doll, was sold for £16 million. Proceeds from the sale were used to support the Southampton Hospitals Charity among others.

Banksy’s relationship with intellectual property and copyright in particular has certainly been tumultuous. But denying him the ability to enforce legal rights over his art would be wrong. Even controversial figures like Banksy should be able to take advantage of the tools the law offers to protect their artistic vision.

Enrico Bonadio is a Reader in Intellectual Property Law at City, University of London. (This article was initially published by The Conversation.)

Law Intellectual Property

What a Trademark Case Over the Shape of Chocolate Bunnies Means for Brands

October 5, 2022 - By Enrico Bonadio

In a move sure to upset chocoholics everywhere, discount supermarket Lidl was recently told to destroy its stocks of chocolate bunnies. The cull – which was ordered by a Swiss court that decided that Lidl’s bunny was too much like Lindt’s iconic chocolate rabbit – comes after Lidl was sued by Swiss confectioner Lindt & Sprüngli for selling a golden foil-wrapped chocolate bunny that Lindt felt looked very similar to its own product. The Swiss federal supreme court ruled that the Lindt Gold Bunny is a valid registered “shape” trademark, and as a result, other companies can be barred from replicating this shape when selling chocolate products in Switzerland.

This case hinged on the distinctiveness of the shape of Lindt bunnies. Lindt has been selling a milk chocolate bunny wrapped in gold-colored foil with a red ribbon and a bell around its neck since 1952, and had registered two 3D trademarks for the product in Switzerland, one in black and white and the other in gold, brown, and red. European law says that companies can only register something as a trademark – and therefore protect it from imitation – if it allows consumers to distinguish the specific product from those of competitors. But Lidl argued that the shape of Lindt bunnies is commonplace and non-distinctive, so it should not qualify for registration.

The Swiss court based its decision that the Lindt bunny shape is a valid trademark on consumer surveys that show shoppers unequivocally associate that shape with Lindt.

This is not the first time the Lindt bunny has ended up in court. Heilemann, a competitor in Germany, started selling golden bunnies in 2018 causing the Swiss chocolatier to sue for trademark infringement. Lindt’s strategy was slightly different in this case, focusing on protecting the color of the packaging rather than its shape. It claimed that the specific golden shade of the foil wrapping is distinctive enough to be protected as a trademark with respect to chocolate bunnies. The German court agreed, again relying on a consumer survey to which 70 percent of respondents said the golden shade in question called to mind Lindt’s products. The court took into account Lindt’s extensive and successful use of this shade and its acquired distinctive character.

Lidl and Lindt's chocolate bunnies — Lidl’s chocolate bunny (left) & Lindt’s chocolate bunny (right)

The Lindt bunny has not always come out on top, however. An earlier 2012 ruling by Europe’s highest court found that the combination of the Lindt Gold Bunny shape and colors (including the pleated red ribbon and attached bell) were not sufficiently different from the way other chocolate products are wrapped, especially rabbits, to warrant an EU trademark.

The Shape of Things to Come

Trademark disputes over the shape of products are hardly novel territory. In many cases, though, courts find shapes to be too commonly used in a specific market to be protected as trademarks. Kit Kat chocolate bars, for example, were the subject of efforts by food producer Nestlé to trademark its four-fingered 3D shape. In the UK, confectioner Cadbury challenged this attempt, successfully claiming that the shape lacked distinctive character. A similar decision was reached by European courts.

Drinks giant Coca-Cola failed to trademark a recent update of its coke bottle because the shape did not produce a clear and unmistakable impression of exclusively being linked with the U.S. beverage giant. Of course, the original Coca-Cola bottle shape is widely associated with the drinks company and is therefore already registered as a trademark in many countries. Its attempt to register an updated version in plastic, metal and glass as a trademark was rejected in 2014. EU courts said the new version was “devoid of any distinctive character” and not, as Coke tried to argue, “a natural evolution of its famous iconic bottle.”

Meanwhile, Christian Dior was handed a loss recently, with the Second Board of Appeal of the European Union Intellectual Property Office refusing to register the shape of the brand’s well-known Saddle bag for use in connection with various types of leather goods, including bags, as a three-dimensional trademark, on the basis that the shape lacks distinctiveness – and “would be regarded as ‘typical’” – when used on handbags.

This is not to say that the shapes of products are difficult to protect. The pyramid shape of Toblerone, believed to be a replica of the Alps’ Matterhorn mountain, for example, is a registered trademark in various jurisdictions and is owned by the U.S. company Mondelez. This was enforced in the UK several years ago when a competitor launched a similarly shaped chocolate bar it called Twin Peaks. At the same time, the familiar shape of the Ferrero Rocher chocolate praline and four of its transparent packaging types have also been successfully registered as trademarks in several countries. This is because the shape is well-known to consumers (again, as revealed by surveys) and the company has a long history of using imagery of these items to distinguish its products.

Protecting Consumers

Non-distinctive shapes usually cannot be registered as trademarks because the law needs to protect the right of all companies to use shapes that are common. Only signs and symbols that help consumers identify products can be registered and therefore, monopolized by one firm. On the other hand, shapes that have been used regularly and for a long time by a variety of manufacturers should not be protected because they do nothing to help people make educated purchase choices. Also, the monopoly offered to trademark owners can be perpetual. Registrations can be renewed every ten years as long as fees are paid. So, being able to forever monopolies common product shapes such as chocolate bunnies could have a negative and lasting impact on competition, although decisions can be subject to legal challenge.

Trademark disputes about product shapes will keep happening and courts should continue to use consumer surveys to come to decisions about who, if anyone, owns certain product shapes. As we have seen, this will not prevent judges from different jurisdictions from reaching different decisions over the same cases, but it will at least keep consumer protection uppermost in mind when making these judgements.

Enrico Bonadio is a Reader in Intellectual Property Law at City, University of London.

Alina Trapova is an Assistant Professor in Law and Autonomous Systems at the University of Nottingham. (This article was initially published by The Conversation.)

Business

How Russia Is Using Intellectual Property as a War Tactic

March 18, 2022 - By Enrico Bonadio

As part of its deadly assault on Ukraine, Russia has taken the rare step to use intellectual property rights as a war tactic. In early March, the Russian government issued a decree saying that Russian companies are no longer obliged to compensate owners of patents, utility models, and industrial designs from “unfriendly” countries, namely western states who have issued sanctions against Russia, including the United Kingdom and United States.

This means that Russian businesses can use intellectual property, such as patented inventions or fashion designs, without having to pay or seek the consent of the rights holders. Affected companies cannot enforce their patents and designs against Russian imitators. This effectively legalizes intellectual piracy in a country already known for failing to adequately protect intangible assets. Last year, Russia was added to a U.S. government “priority watch list” of countries which do not sufficiently protect US intellectual properties.

Vladimir Putin’s move is clearly a reaction to the west’s economic sanctions and suspension of Russia’s trade privileges. It is also an answer to many multinational companies’ decisions to cease doing business with Russian companies. Sanctions and boycotts have massively affected the Russian economy to the extent that the country is now on the verge of bankruptcy with interest rates having doubled. The stock market has remained closed for weeks and the ruble has fallen dramatically.

Unprecedented attack on intellectual property

The suspension of intellectual property rights as an economic weapon in the context of a conflict is unprecedented, at least in recent decades. Historical examples date back to the first world war, when the U.S. introduced the Trading With the Enemy Act. This act seized copyright and patents owned by enemy countries, including the patent to aspirin, famously a German invention. Following the war, the Aspirin trademark owned by the German pharmaceutical company Bayer was given up to the U.S., France, UK, and Russia, as part of Germany’s war reparations agreed in the Treaty of Versailles.

Russian officials have hinted that other intellectual property rights owned by western countries may be soon restricted, including software and trademarks. This could allow local entrepreneurs to appropriate and exploit – without permission and for free – brands such as McDonald’s. One Russian restaurant chain has even recently adopted, and applied to register locally, a logo very similar to the famous golden arches. The sanctions have also led a Russian judge to dismiss a copyright and trademark infringement lawsuit brought by the British company that produces animated series Peppa Pig. Andrei Slavinsky said in court that the “unfriendly actions of the United States of America and affiliated foreign countries” influenced his decision.

Russia Intellectual Property — image via @JoshGerben

Ukraine, for its part, has not been inactive in this intellectual property battle. Its ministry of defense recently hacked and leaked confidential documents it claimed to have taken from a Russian nuclear power station.

Does it violate international law?

Russia’s suspension of patents and other intellectual property rights owned by western companies may violate international treaties which protect these assets at global level. All countries of the World Trade Organization (“WTO”) need to respect these laws and guarantee that foreign businesses can enforce intellectual property rights against imitators.

Countries damaged by the Russian measure may bring Russia to a WTO court and ask for additional sanctions to be imposed. This would again hit Russian businesses, especially those which rely on brands and patented technology, as well as the creative industry sector. The only way Russia could justify the measure would be to rely on a security exception made available by the WTO itself. This exception allows countries to take any action they consider necessary to protect their essential security interests in times of war. But it has never been invoked by any state in the context of an armed conflict, and therefore never tested before the WTO judges.

If Russia is expelled from the WTO club, as has been proposed, that would, paradoxically, insulate it from global intellectual property challenges. No country would be able to bring Russia before a court of an organization it is no longer a member of. These are predictions of what could happen if the war continues. It goes without saying that a prompt end to the conflict may instead relax the tension between the west and Russia, and put an end to the current intellectual property battle.

Enrico Bonadio is a Reader in Intellectual Property Law at City, University of London. Alina Trapova is an Assistant Professor in Law and Autonomous Systems at the University of Nottingham. (This article was initially published by The Conversation.)

Law

How Could an Italian Gallery Sue Over Use of its Public Domain Art?

January 10, 2021 - By Enrico Bonadio

Boticelli’s The Birth of Venus resides within the Uffizi gallery in Florence, Italy. It is believed to have been painted in the mid-1480s and as such, the work of art is classed as being in the public domain, free from copyright protections around the world. However, in early July the Uffizi set its lawyers on the website Pornhub, sending the company a strongly worded letter threatening legal action over the unwelcome use of The Birth of Venus along with several of Uffizi’s other masterpieces. This came in response to the pornography platform’s launch of an online guide to the nude or erotic aspects of artworks in well-known galleries and museums around the world, such as the National Gallery in London, the Museo del Prado in Madrid, the Louvre in Paris and the Uffizi Gallery. Particularly controversial has been Pornhub’s turning of classic artworks into pornographic videos.

It seems the letter has produced its desired effect as Pornhub has subsequently removed any references and artworks pertaining to the Uffizi. But how was it able to create this legal pressure over a work of art that falls within the public domain?

Protection of cultural heritage

The Uffizi has likely invoked rules within the Italian Cultural Heritage and Landscape Code. This law empowers possessors of cultural heritage artefacts to prohibit their commercial exploitation, even where the latter have been created centuries ago. Italian law strongly protects its heritage. The definition of cultural heritage itself under Italian law is broad: any works which “are of artistic, historical, archaeological and ethno-anthropological interest”. So, if you want to use the image of the Colosseum in your pizza delivery commercial, you may need to pay (at central or local level) a licence fee. An action can be taken to stop any unwelcome or controversial use of the image, for example in a context like porn websites.

In 2017, a court in Florence ordered a ticket agency to stop using the image of Michelangelo’s David on its brochures and website. In the same year, another court in Palermo condemned a bank that had used pictures of the local Teatro Massimo in their advertising campaign. Indeed, in Italy entities which own cultural artefacts can oppose any commercial use of such artefacts. Yet, whether this may happen in other countries remains doubtful.

The issue is not only legal. It also political. In 2014, the Italian culture secretary, Dario Franceschini, strongly protested against US arms engineering company ArmaLite which disseminated ads depicting the David carrying a rifle. Franceschini claimed that the Armed David jeopardised the honour and artistic value of Buonarotti’s work.

Copyright and the public domain

Museum and galleries can also rely on copyright to restrict the use of pictures of public domain pieces within their collection, or anyway charge for such use. Several of them actually do that – for example by declaring that their photographs of old paintings are subject to copyright and cannot be used without paying a fee. But is that fair? One may note that giving custodians of old artefacts a monopoly over those pictures means to artificially monopolise the underlying works, which should instead belong to the public and be available for anyone to use or reuse it.

There is also an issue of originality. Copyright law only protects original works of authorship. While the originality requirement is interpreted generously in most countries, a threshold does exist. In a US case in the late 90s, Bridgeman Art Library v. Corel Corp, it was held that exact photographic copies of public domain images could not be protected by copyright because the copies weren’t original enough. Yet, it could be counter-argued that these photographs are not iPhone pics taken by holiday-makers.

Time, labor, and skills are needed to move a painting from the gallery or museum to the studio. The photographer must be skilled, good cameras need to be used which avoid glare, and ensure careful light meter readings and faithful colours. This is an investment – the argument goes – that must be legally protected, for example via a no-photo policy. Indeed, there are economic interests at stake. Take the Uffizi again. It is one of the most visited museums in Italy, and in 2019 around 1 million euros in revenue came from the sale of photographs of its collection.

While pictures of public domain works are not the focus in the case involving Pornhub, the Uffizi regularly relies on copyright to extract economic profits from those pictures.

Access to culture

There is also an access to culture angle. Laws which consider pictures of paintings created centuries ago as deserving copyright protection frustrates the most important principle of copyright regimes themselves: namely, that after a specific period of time everyone should be able to use, and build upon, artworks that have fallen into the public domain.

There is the need for a wide category of people to access high quality and faithful representations of public domain works. This is the case of an art university professor showing the pic of an old artwork in class or an art historian publishing the photo in her book. Creators who want to incorporate, build on and reinterpret public domain works should be able to do so on free speech grounds. Restricting the ability to use these pictures by tampering with copyright law is risky. Yet, it is one thing to rely on criminal law to stop crimes and another to turn copyright upside down so as to indirectly be able to monopolise artistic works, which are simply too old to be protected.

Enrico Bonadio is a Reader in Intellectual Property Law at City, University of London.

Magali Contardi is a PhD Candidate in Intellectual Property Law at Universidad de Alicante.

Law Intellectual Property

To Banksy, Keeping His Identity a Secret is More Important Than Winning Copyright Cases

September 23, 2020 - By Enrico Bonadio

Britain’s most famous – and enigmatic – graffiti artist Banksy once proclaimed that “copyright is for losers.” Now, having lost a two-year legal fight over the trademark rights of one of his iconic artworks, that claim has come back to haunt him. On September 16, the European Union Trademark Office (“EUTM”) invalidated a trademark registered by Pest Control, the official body that authenticates Banksy’s art. The trademark consisted of Banksy’s iconic mural Flower Thrower, originally painted in the Palestinian town of Bethlehem.

This legal dispute initially erupted between Pest Control and British greeting card company Full Colour Black, which often uses artworks by Banksy. In March 2019, Full Colour initiated proceedings with the EUTM, in which it sought for the Flower Thrower mark to be cancelled, claiming that it was filed in bad faith.

The row hit the headlines after Banksy opened a store – entitled, Gross Domestic Product – in South London in the fall of 2019. At the time that his outpost opened, the mysterious artist spoke to the budding trademark battle, saying, “A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally.”

Banksy also revealed that he had been legally advised that the best way to remedy the situation was to create his own merchandise in order to show that he was actually using his trademark in commerce, as required by law. Up until that point, the famously secretive artist had never regularly manufactured or sold merchandise bearing any of his own branding. But such statements – not unexpectedly – backfired. The EUTM noted in its decision that in opening a shop specifically to sell merchandise showing the Flower Thrower (i.e., the artwork that Full Colour Black wanted to use and the trademark registration, it wanted to invalidate ), Banksy had admitted that his use made of the Flower Thrower mark on merch was not genuine use.

Instead, the newly-introduced merch that Banksy was offering up by way of his Gross Domestic Product shop was being done in bad faith, inconsistent with honest practices and aimed at creating or keeping a share of the market by selling products simply to circumvent the law. This is not just bad news for the Flower Thrower mark. The decision could also damage other Banksy trademark registrations that incorporate his various iconic artworks, which are now at risk of being invalidated on the same grounds.

Trademark or copyright?

The case raises other issues, too. For one thing, it poses the question of whether artworks be monopolized by registering them as trademarks? Copyright and trademarks are different intellectual property rights. While copyright aims to protect artistic works, such as paintings, trademarks protect logos and signs that help consumers to distinguish between the products/services of different companies and to make informed purchasing choices. The latter is at issue here, as Banksy – who has made clear his dislike of copyright – has tried to rely here on trademark law to protect his artworks. And this is not the first time he has done so.

The reason Banksy does not point to copyright law, and instead relies on trademarks? A copyright suit would require Pest Control to show that it has acquired the copyright from the artist. This would reveal Banksy’s real name, which the famously anonymous artist wants to avoid, as it would potentially remove his aura of mystery and affect the commercial value of his art.

Also, copyright is limited in the duration of its protections, while trademarks can be continuously renewed; trademark rights in an artwork – presuming that work functions as a trademark – can give the artist a perpetual monopoly over it. This may offend a basic intellectual property law principle, namely that after a specific period of time everyone should be able to use, and build upon, artworks that have fallen into the public domain.

Banksy is not alone in looking to trademark law to protect his works. Of course, there are artworks which are registered and enforced as trademarks, such as Disney’s iconic characters. However, in most cases the trademark-protected work of art is used in a genuine way, with merchandise regularly produced and sold by the rights holder. But where the use has been token and aimed just at getting around the law, the scenario is arguably a bit different. This is more so in cases like Banksy’s, when an artist does not want to claim copyright, but at the same time seeks potentially perpetual trademark rights over his art.

So, Banksy’s statement – “Copyright is for losers” – has now come back to bite him. His negative opinion about an important intellectual property right clearly jeopardizes his position in proceedings where proprietary rights are debated, as the EUTM suggested in its decision.

Certainly, an anti-establishment viewpoint does not prevent artists from relying on “establishment” legal tools to protect the very rights they criticize. Everyone has the right to freedom of expression and a trademark owner cannot lose the right to register a mark because he has steadfastly opposed copyright law. In other words, you can still be anti-establishment and take legal action to protect your intellectual property. But what you cannot do is behave as Banksy did in creating his shop to simply get around the law and keep perpetual monopolies over his art.

Illegal graffiti

Beyond that, the EUTM noted that illegal graffiti cannot be protected by copyright because it is produced through the commission of a criminal act. It added that as graffiti is normally placed in public places for all to view and photograph, no copyright can be claimed.

But as lawyers and academics have argued for years (including in response to arguments by the likes of Swedish fast fashion giant H&M and Italian fashion brand Moschino), these statements are not accurate. The process of creating an artwork, whether legal or illegal, is not conclusive when it comes to determining whether copyright comes into existence. For example, if I steal a pencil and create a wonderful drawing, why should I be denied copyright and be forced to tolerate someone else cashing in on my work? It would be unfair. The same could be said of illegal street art. Also, the fact that graffiti is placed in public locations does not assume that artists waive or are deprived of the rights copyright law offers them. That is simply mistaken.

Apart from this point, the decision is well-reasoned and fair. If Banksy wants to own, keep and enforce registered trademarks, he needs to act in good faith, and start using them seriously by regularly selling merchandise. He only needs to reveal his name if he wants to pursue copyright actions. Keeping anonymity is more important to Banksy than winning copyright cases.

Enrico Bonadio is a senior lecturer of Intellectual Property Law at the City University of London. (Additional reference to H&M and Moschino cases courtesy of TFL)