Trademark Thrower: Using Banksy's Recent Eu Trademark Misadventures to Assess Why Copyright Is Not "for Losers"

• Publication year: 2022

Trademark Thrower: Using Banksy's Recent EU Trademark Misadventures to Assess Why Copyright Is Not "For Losers"

Shelly Kurland

TRADEMARK THROWER: USING BANKSY'S RECENT EU TRADEMARK MISADVENTURES TO ASSESS WHY COPYRIGHT IS NOT "FOR LOSERS"

ABSTRACT

This Comment seeks to distinguish the protections and protection requirements of trademark and copyright in an international context, specifically using a recent case in which internationally known street artist Banksy lost his European Union trademark protections despite registration. This EU trademark proceeding will be utilized to analyze the requirements to maintain trademark protection in an international context and explain why those requirements are important to the integrity of intellectual property protections.

This Comment will first give an overview of trademark and copyright as intellectual property in general, then go into the specifics of the U.S. and EU trademark systems. This Comment will then evaluate why a trademark should not be used as a backup form of protection for copyright protection, and evaluate the distinctions in the U.S. and EU intellectual property systems, providing a potential solution specific to Banksy.

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TABLE OF CONTENTS

Introduction...............................................................................576

I. INTELLECTUAL PROPERTY GENERALLY..............................579

A. Copyright...................................................................... 580

1. In the United States................................................. 580
2. In the European Union ........................................... 581

B. Trademark .................................................................... 582

II. TRADEMARK SYSTEMS IN THE UNITED STATES AND EUROPEAN UNION................................................................585

A. Trademark in the United States .................................... 585
B. Trademark in the European Union ............................... 589

III. "DON'T SEND A TRADEMARK TO DO A COPYRIGHT'S JOB"......................................................................................592

A. The EU Cancellation Division Case and Cancellation of Banksy's Mark.......................................................... 594
B. The Milan Case and Copyright .................................... 596
C. Banksy and the Case for Copyright.............................. 600

CONCLUSION...................................................................................600

INTRODUCTION

Trademarks possess the ability to be powerful, and this ability has been especially prevalent in 2020. Whether it is varying reactions to the mark conveying "Make America Great Again,"¹ the familiarity and comfort certain brands bring consumers when grocery shopping through a phone application, or even reactions to the marks for the COVID-19 vaccine makers, trademarks are a powerful type of protection in today's world. Whether it is in the United States or the European Union (EU), registering a trademark is an effective way to protect a brand and uphold a certain number of rights—but trademark is undoubtedly a "use it or lose it" system and must be taken seriously as such.

In April 2020, street artist Banksy, who has become internationally known while remaining anonymous under his pseudonym, lost rights to his previously registered EU trademark.² The canceled mark was for his painting called Flower Thrower, arguably his most famous work.³ Although Banksy successfully registered the mark in 2014, it was canceled due to a trademark challenge when

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Banksy sought to enforce his rights against a business that was using the registered trademark on its goods.⁴ While, in the words of scholar Rebecca Tushnet, Banksy most certainly sent "a trademark to do a copyright's job,"⁵ the cancellation of his mark leads to questions. For example, the question of where the line is drawn with trademark registration, specifically in the United States versus the European Union, especially since trademark is a system of protection which can become depleted.⁶

Intellectual property litigation, enforcing intellectual property rights through other methods, and trademark registration itself are all costly. The fact that trademark protection is part of a depletable system is a cause for concern, especially when the European Union is letting trademark registrations such as Banksy's Flower Thrower through as registrable, just to cancel the mark when he tries to enforce the rights he believed he lawfully obtained.⁷ This is a harsh but clear instance of a matter of copyright versus trademark. While Banksy made his opinion of copyright protection clear in his statement "copyright is for losers,"⁸ authors have theorized his avoidance of copyright in favor of trademark protection can be attributed to his desire to remain anonymous, working under his pseudonym with no threat to his identity.⁹

Trademark systems in the United States and the European Union have many distinctions. One way the systems differ is how the United States uses the first-to-use system to establish priority rights in a mark.¹⁰ In contrast, the European Union uses the first-to-file system to establish priority rights.¹¹ In a first-to-use system, the user who first used a mark in commerce has priority rights to the mark compared to a later user.¹² On the other hand, in a first-to-file system, priority rights to the mark are credited to the applicant who first files the mark

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for registration.¹³ This first-to-use priority rights system in the United States demonstrates how the United States places more weight on the actual use of a mark in commerce compared to registration. In contrast, the EU model places more weight on its trademark filing system.

The foundations of protection eligibility for copyright and trademark are distinct.¹⁴ Copyright, in short, is protectable to help foster creativity and promote the progress of science and the useful arts, prioritizing the author's exclusive rights to their works.¹⁵ In contrast, the foundation of trademarks lies in commerce¹⁶ and creating a consumer-friendly environment that allows a sense of certainty or confidence in brands.¹⁷ In a system of protection where the subj ect matter being protected is finite and thus can become depleted, there should be a creativity incentive; or perhaps there already is an element of creativity inherent in the system since there can only be so many marks.

In a sense and to an extent, creativity is rewarded under trademark law, as it is with copyright, because marks which are "arbitrary and fanciful" are the most easily protectable under the U.S. registration system.¹⁸ The trademark system in the United States is seemingly becoming more liberal in what it allows to be registered, as demonstrated in the influential and game-changing U.S. Supreme Court case, Matal v. Tam.¹⁹ This 2017 case struck down the disparaging marks provision and the immoral and scandalous marks provision of the Lanham Act, which made registering those categories of marks impermissible.²⁰ The European Union also allows registration of marks which are not eligible in the United States, adding to the opportunity for creativity in the trademark system.²¹

While there is arguably an element of creativity in trademark systems, and a plethora of types of marks eligible for registration, especially in the European Union, these factors do not mean that copyright and trademark can be, or should be, used interchangeably. The trademark registration systems should be more stringent to avoid the use of copyright and trademark interchangeably. A more

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rigorous trademark registration system would help to avoid the costs of needless registration, rights enforcement, and intellectual property litigation, especially if the mark at issue is canceled or invalidated. Since the European Union emphasizes trademark registration by using a first-to-file priority rights system, registration should be a stricter process than what is currently allowed by the EU trademark system.

This Comment will first give an overview of trademark and copyright as intellectual property in general, then go into the specifics of the U.S. trademark system and the EU trademark system. This Comment will then evaluate why a trademark should not be used as a backup form of protection for copyright protection. The primary case used for this analysis is Banksy's EU trademark cancellation of his previously-registered mark for Flower Thrower. Lastly, this Comment will propose that the European Union should be more stringent with what it allows to be registered to prevent issues such as "warehousing," costly and time-consuming cancellation proceedings, and trademark depletion.

I. INTELLECTUAL PROPERTY GENERALLY

The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations.²² WIPO explains that intellectual property "refers to creations of the mind - everything from works of art to inventions, computer programs to trademarks and other commercial signs."²³ WIPO makes the distinction between two categories of intellectual property.²⁴ The first category is "industrial property[,]" and the second is "copyright and related rights[.]"²⁵ The first category includes patents and trademarks, while the second category is more oriented towards the arts, such as literary works and various types of performances.²⁶ Both copyright and trademark can protect a work, but that does not mean the latter should be used to replace the former or wrongly serve as backup for a work.²⁷

The key to obtaining and utilizing rights to trademark and copyright is to file an application to register the eligible mark or work through the appropriate

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medium. The only exception is that for copyright in the European Union, rights that come with registration vest automatically.²⁸ Registration requirements vary depending on what an applicant is attempting to register and the...