The intellectual property protection Banksy wants comes at a cost

By Tony Poland, LegalMatters Staff • The latest attempt by famed street artist Banksy to remain in the shadows while protecting his iconic work from unauthorized reproduction is “an interesting study in the differences between copyright and trademark law,” says Toronto intellectual property lawyer John Simpson.

The Sydney Morning Herald reports that the lawyer for a British greeting card company trying to stop Banksy from trademarking two of his most iconic artworks says the artist is “trying to backdoor” Australia’s copyright laws.

In a legal move that previously failed in a European court, Banksy applied to an Australian court to register two images – Girl with Balloon and Love is In the Air ­– as trademarks rather than copyright.

Simpson, principal of IP and new media law boutique Shift Law Professional Corporation, says the tactic was necessitated by Banksy’s desire to conceal his identity since “you can’t enforce copyright in a work while remaining anonymous.”   

‘The applicant also needs to disclose their identity’

“Fundamental to copyright law is the requirement that the creator of a work, the person who is the first owner of copyright, proves that they created it and the circumstances in which they created it. The applicant also needs to disclose their identity including what country they are a resident or citizen of,” he says.

Simpson, who is not involved in the case and comments generally, says it has been shrewdly noted that making a claim for trademark in this instance “is like trying to fit a square peg into a round hole.”

“Banksy tried to do the same thing in Europe and now Australia. And each time he tries, it makes the news,” he says. “Generally speaking, his efforts to establish and protect rights to his works through trademark law – when really what he is trying to obtain and enforce is copyright ­– is an Interesting study in the difference between the two.”

Simpson says trademark and copyright law “have different policy objectives.”

“The purpose of copyright law is to create incentives for creators to create, and to enable creators to commercially benefit from their creations,” he explains. “Trademark law is, in one part, about consumer protection, helping consumers identify the source of the goods that they are buying. And at the same time, it is there to ensure a company’s products are not confused in the marketplace.”

Banksy’s artwork has appeared on walls, streets and bridges throughout the world. Recently, one of the political activist’s paintings, Game Changer, sold at auction for US$20 million. The painting was a gift from Banksy to an English hospital in appreciation for the British medical community’s efforts during the pandemic and was auctioned off with the artist’s blessing.

Wants to secure two trademarks

Through his company, Pest Control Office Ltd., Banksy wants to secure trademarks for two images, hoping to stop postcard and greeting card companies from making a profit from them.

“The businesses are doing that on the basis that they are using public art from some anonymous person,” says Simpson. “It appears on the street, it is famous and they feel legally justified in copying it. 

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“If he wants to stop the reproduction, Banksy is going to have to apply for copyright protection and disclose who he is,” he adds. “He and his company are a bit of a quandary so they came up with this idea of using trademark law to their advantage in an attempt to assert intellectual property rights in his work.” 

But trademark law is about “exclusive rights to use a mark, or an indicator of trade source, to sell certain goods commercially,” such as a logo or a name, Simpson says.

“In a sense he is trying to equate his famous works with Nike’s swoosh or McDonald’s golden arches, but that’s not what they are,” he says. “Those logos don’t function as works of art. Those are trade source indicators.”

Simpson says he is not surprised Banksy’s attempt to “backdoor” copyright laws has been met with resistance. 

“Those opposing the application make the point that if he is not going to play by copyright rules, he can’t seek copyright protection,” he says. “For copyright to subsist in a work, you have to identify the author. Your identity is essential.”

Banksy faces a difficult fight

Banksy’s tactic is not unheard of but he faces a difficult fight, Simpson says.

“Trademarks offices of the world are catching on to this,” he says. “They are saying, ‘It’s either trademark or it isn’t and we’re not satisfied that this is a trademark. This is a work of art that you’re trying to protect.’”

Simpson notes that “part of Banksy’s aura, his mystique and one of the gimmicks used to draw attention to his work is to keep him anonymous,” which explains the trademark application.

“It’s an understandable effort. They are seeking protection while attempting to maintain his anonymity, which is integral to the value of his art,” Simpson adds. “Trademark is the closest form of intellectual property protection they can get while remaining incognito. It is a unique circumstance. After all, how many famous artists are anonymous?”