Ip and Art: an International Perspective

• Author: Cristina Manasse
• Publication year: 2019
• Citation: Vol. 44 No. 3

IP and Art: An International Perspective

Cristina Manasse

Manasse Studio Legale, Milan

Banksy's name is a brand: merchandise banned from an exhibition

Once again, the English street artist known as "Banksy" made the news, this time in a lawsuit in a Milan court about an unauthorized exhibition of some of his works.¹ A company with the unlikely name of Pest Control Office Ltd, which manages and protects the rights of the artists, sued 24 Ore Cultura srl, the organizers of an exhibition of some of Banksy's works (and reproductions) at the Milan museum known as MUDEC.²

Among the claims in the suit in the Milan Court, Pest Control claimed that the exhibition infringed copyrights by using the name of the artists and some of Banksy's artworks in promotions and unfair competition by selling merchandise with the Banksy name and reproductions of his works. The Court rejected all accusations save for one: the (mis)use of the Banksy name on the merchandise because the public perceived the name "Banksy" as a brand name.³

What Happened

In July 2018, Gianni Mercurio, the curator of the MUDEC exhibition dedicated to Banksy, got in touch with Pest Control about rights for the exhibition. It must be remembered that Pest Control managed the artworks of Banksy, their sales and the organization of exhibitions. In addition, Pest Control had registered the nominative brand "BANKSY" as well as the names of some of Banksy's best known works such as the figurative brand with the image of "Balloon Girl" and the figurative brand with the image "Love is in the air" Registration covered such uses as Exhibition, cultural services, publications, material for merchandising

In response, Pest Control informed Mercurio that neither the artist nor Pest Control authorized the show and that authorization would not be forthcoming for the use of the name and image of the artists for possible merchandising material, for promotion and for a possible catalogue. Nonetheless, MUDEC went ahead with the show "The art of Banksy. A visual protest" which opened in November 2018, curated by Mercurio and organized by 24 Ore Cultura. The exhibition included more than 70 artworks attributed to Banksy. And that's when Pest Control sued in a court in Milan.

Pest Control's Claims

According to Pest Control, the organizers had counterfeited the registered brand names due to the fact that the word mark "Banksy" was dominant, both from a visual point of view and of a conceptual one, in the communication done by the organizers and due to the exact reproduction of the registered marks such as Balloon Girl. The use of those brands, argued Pest Control, would exceed any sort of reasonable use, such as a descriptive use of the brands, which would lead the public to think that there is an association with the brand names, or sort of link with them, or commercial partnerships, and the exhibition and the exhibition organizers. In other words, the use of the brand names exceeds the simple descriptive requirement for products and services offered to the public. The public would be confused about the provenance of services and products that would also result in a violation of the professional conduct principles related to intellectual property protection. In particular, Pest Control sought immediate action by the court, including seizure of the offending promotional materials and merchandise.

The 24 Ore Cultura Defense

24 Ore Cultura based its defences on artistic issue and legal principles. Some of the arguments were linked to the activity of the artist, who—for having done publicly accessible artworks—in essence waived his rights in such works, which is something generally done by street artists. In...