Back in January of this year, the Commercial Chamber of the Milan Court issued an interesting order in the preliminary injunction proceedings instigated by Pest Control Office Limited against 24 Ore Cultura s.r.l., the organizer of an “unauthorized” exhibition of Banksy works of art owned by private collectors – The art of Banksy. A visual protest – and displayed in the Mudec museum of Milan.
Although it may appear as an open and shut case, one should not jump to conclusions or be misled by the use of the word “unauthorized”. To fully understand the position it’s helpful to step back and look at the wider factual framework.
While Banksy is generally well known as a somewhat mysterious and fascinating street artist who became wildly popular through his/her anti-war, anti-consumerism, anti-authoritarianism approach what is lesser well known is the role played by Pest Control Office Limited, which acts as the handling service for BANKSY. In a nutshell, Pest Control answers enquiries and determines whether Banksy is actually responsible for a certain piece of artwork, issuing the relevant paperwork.
In addition to the “anti-list” above, there is another interesting aspect: Banksy is (or maybe it is more appropriate to say – was) notoriously anti-copyright, once claiming that copyright is for losers. Yet, we are commenting here on what appears to be an interesting win – or partial win – for Pest Control Office Limited, and thus in a way Banksy, regarding the use of Banksy’s name and trademarks on merchandising products sold in the Mudec museum gift shop.
It appears that Pest Control obtained an injunction order against the marketing and sales of specific products sold in the gift shop, based on its enforcement of certain registered trademarks – owned by Pest Control – eg: for the wordmark “BANKSY” and the figurative marks “Girl with balloon” and “Rage, the Flower Thrower”. It therefore seems that this once anti-copyright artist is getting less anti-copyright…
Returning to the legal perspective: the most interesting aspects of this decision involves the use, on a variety of generic products such as stationary and similar consumer goods, of the BANSKY trademarks and the catalogue of the exhibition containing the representation of the works of art displayed in the museum.
While the Milan Court found the use of the above mentioned trademarks in promotional material for the exhibition to be lawful and in line with the principle regarding professional correctness (i.e. it does not lead to a belief that there is a commercial relationship between the parties, it does not discredit the trademarks, it does not diminish their value nor does the organizer of the exhibition present a product that imitates the product protected by the exclusivity) the Court held that a different conclusion should be reached for use of said trademarks in the case of merchandised products.
The Milan Court found that the use of the trademarks on generic consumer goods – with no correlation to the exhibition – is in itself sufficient to find that this use is indeed unlawful. Moreover, Banksy’s name placed under Bansky’s alleged quote is not sufficient to exclude an unlawful use, given how the purely commercial purpose of this combination excludes any presumed relevance to the fact that the sign is associated with a sentence attributable to the artist.
Moving onto the issue of the exhibition’s catalogue, Pest Control brought forth a claim for unfair competition, which the Court examined in great detail.
The Milan Court started by assessing whether Pest Control Office Limited was considerable as a competitor of 24 Ore Cultura s.r.l. in any way relevant under the applicable law. By examining the documentation filed in the proceedings, the Court reached the conclusion that Pest Control does operate in the same field as 24 Ore Cultura s.r.l. (i.e. exhibitions) at the very least as the entity that authorizes the exhibition of original Banksy pieces.
The Court notes that the exhibition organized by 24 Ore Cultura s.r.l. comprised works of art bought by private collectors with the artist’s authorization – once again hinting at the fact that Banksy may be leaving the door ajar to let in some IP rights when it suits him/her.
Having clarified this, the Court underlined that selling/transferring an original reproduction of the art piece, does not automatically include the transfer of the economic rights on said piece. Settled case law has established that the photographic reproduction of a work of art in a catalogue amounts to economic use of the same and falls in the scope of the artist’s exclusive right of reproduction.
That being said, 24 Ore Cultura s.r.l. produced the agreements it had with the various private collectors in which the latter authorized the reproduction of the pieces of art and granted their use for the creation of a catalogue and of merchandising.
Nonetheless, the Court found that such documentation was unable to overcome the obstacle provided by the previously mentioned transfer of rights by the artists. In other words, said agreements do not prove that the artist transferred the right of economic use to the private collectors, who, therefore, would not be in the position to transfer such rights in the first place.
However, according to the Court, this is not sufficient to satisfy an unfair competition claim, given the lack of evidence that such acts damage the party who raised the claim, namely Pest Control.
The Court, adroitly framing the matter, highlighted that Pest Control only instigated the proceedings enforcing its registered trademarks and did not instigate the proceedings on the basis of the right to economically use Banksy’s work. Moreover – and in any event – the documentation on file did not allow the Court to determine whether or not Banksy transferred his/her economic rights, including reproduction, to Pest Control Office Limited. Pest Control was therefore deemed to lack the essential requisite of the prima facie case when the Court examined its claim against the use and sale of the catalogue, and consequently lacked an essential requisite for obtaining a preliminary injunction order on the catalogue.
Thus, the Court dismissed Pest Control’s motion regarding the catalogue but granted the measures requested against the market and sale of the merchandised products.