Graffiti / street art / stencils / anonymity / t-shirts

[retrocausality]

Hi again, all!

I was just wondering if anyone could clarify a few things for me with regard to stencil graffiti / street art, anonymous artists, and selling t-shirts.

I did a search on here for "graffiti" and found two related threads, in which I came across the phrase/concept 'Non faciat malum, ut inde veniat bonum' (for those not familiar with it that are reading this, it basically means that nobody should be allowed to use the law to profit from illegal acts - i.e. no graffiti artist could sue someone for using a photo or derivative work of a piece of graffiti that they'd created somewhere illegally).

In the case of the thread I just read, someone was making a book of photographs they'd taken of graffiti, which was said to be also arguably "fair dealing" ("fair use" to the Americans) due to the nature of the book.

If hypothetically a piece of graffiti were recreated by an unrelated third party for sale on t-shirts, presumably that caveat wouldn't apply, but I was wondering what are the implications for t-shirt printing companies wishing to make graffiti-based t-shirts in terms of copyright?

Now, most people in the civilised world nowadays will have heard of Banksy, the stencil graffiti artist. He creates stencils at home or in a workshop, then uses them to daub his artwork elsewhere, usually somewhere illegal.

If he's creating the stencils at home, presumably he would also be creating legal versions of the eventually-illegally-daubed work at home or in his workshop before taking the designs to the streets, so the illegal part of the situation comes much later than the creation of the stencils and the artwork. Does this mean that stencil artists do retain copyright of their work, even though the version that most people get to see is the final illegal version of the piece, or does the illegal creation of the final piece counteract the fact that it is a reproduction of an earlier legal work?

How does this situation fare with regard to "the tort of passing off"? If someone unaffiliated with the artist were advertising "Banksy t-shirts" that contained only his illegally-daubed artwork (as oppose to the legal canvas pieces he's made) for example, would that be considered "passing off" or even a trademark infringement? (I think I read somewhere that trademarks don't necessarily need to be registered to be enforceable as long as they were recognisable as being owned by a specific party? I.e. the difference between "TM" and an R in a circle?) Or would all of this paragraph be covered by the latin phrase I quoted earlier?

I mentioned briefly earlier that Banksy has, in addition to his illegal graffiti, made legitimate canvas-based art, such as the wonderful "Monkey Parliament" but has maintained his anonymity even when releasing these pieces for sale, instead getting agents to deal with the sale for him.

If we know for sure that a legally-created canvas piece is a "Banksy" but the public don't know who "Banksy" actually is, is that artwork still protected by copyright, or does the anonymity of the artist counteract the copyright?

Lastly, is the latin phrase quoted above a globally-accepted rule, or would it only apply to graffiti that was made in the UK, or is there a convention that certain countries adhere to but not others for this sort of case?

Thanks for your time,

Phil

[retrocausality]

Ah, one more question I meant to ask...

What's the situation with graffiti that has been left in "designated legal graffiti areas" by anonymous artists? Fair game for a third party t-shirt company due to the anonymity, or copyright-liable providing that the anonymous artist outs himself to the public and can prove he made the work in question?

[AndyJ]

Hi Phil,
There are two different aspects to this: what the law says, and what might actually happen in the case of Banksy or another street artist.

Banksy's Philosophy.
Banksy himself has expressed much scorn for copyright and for people who seek to make money out of his protest art, seeing them as being representative of the establishment which much of his art mocks or attacks. It is somewhat ironic therefore that he has published a number of books about his art which are themselves protected by copyright. But even if he is entitled to copyright protection for his work (as covered in the next paragraph) it is an entirely different matter whether he would seek to enforce those rights. The following quote was taken from his old website and perhaps illustrates his views on the matter:

"You're welcome to download whatever you wish from this site for personal use. However, making your own art or merchandise and passing it off as ‘official’ or authentic Banksy artwork is bad and very wrong"

The Law.
I think there is little doubt that in most cases, works of the standard of Banksy's qualify for copyright because they embody his character and personality as an artist, and, unlike trade mark, copyright law sets no barrier against works which are contrary to public policy or morality. It is more debatable whether copyright protection might extend to graffiti such as rudimentary tags or daubs of paint etc, but since your question was not really about that sort of graffiti I won't dwell on that point. The latin tag non faciat malum is a maxim, somewhat similar in its intention to the equitable maxim, 'he that would come to equity should come with clean hands', which is there to guide the court as to whether it should hear a claim for infringement. There are several other maxims of this sort, such as de minimis: 'the law does not concern itself with trifles' which can be deployed to prevent a claim being heard by a court. But to call it a 'rule' is to give it too much weight. A court does not need to follow the maxim, and indeed if we take the example of a trespasser who is injured due to the negligence of a property owner, the trespasser may bring a cause of action even though he may be first liable for the tort of trespass, something which appears to be contrary to the maxim. So if we accept that, in all probability, the sort of art your company might want to feature on a tee shirt would also be the sort which would qualify for copyright protection, it might be immaterial, as far as a claim for infringement is concerned, whether the art work had been copied from a location where it amounted to criminal damage, especially if the 'original' work, as with Banksy's stencils, had been created elsewhere under circumstances which were legal. (There's a possible argument that works made preparatory to committing an offence could themselves be illegal, but I think that straying too far from the core issue.) As for trade marks and passing-off, I'll deal with that later in the context of Banksy himself. As you surmise, any graffito which is applied with permission of the property owner cannot be criminal damage and so would be treated just like any normal piece of art. For an interesting insight into the problems this may cause, see this story from New York about a building known as 5Pointz. And finally under the heading of the law, there is the issue of moral rights. These are contained within their own chapter of the Copyright Designs and Patents Act, and the most relevant one to your question can be found in Section 84: the right not to have a work falsely attributed to an author or artist. The possibilities this offers Banksy, if he so chose, to cause mayhem in the courts are endless.

Banksy.
For all that his true identity is not widely known, Banksy is in fact far more 'mainstream' than most other street artists. For a start there is a company called Pest Control Office Limited* which represents his interests and will even arrange for suspected Banksy work to be authenticated. What's more the company has registered 'Banksy' as both a UK and Community trade mark in a wide range of classes, including clothing, and so for your particular example we have no need to consider passing-off, since trade mark law adequately deals with what might happen. And since this mark has been registered, it is reasonable to assume that it will be protected. This company also provides a vehicle, somewhat removed from the artist himself, by which legal action, including for copyright infringement, could be pursued through the courts, so I think it would be rash to assume such work is there to be plundered.

Conclusion.
I hope I have satisfactorily addressed all of you points. The biggest uncertainty in all this lies in deciding whether a particular artist would seek to enforce his rights should anyone infringe them. For many such artists, the danger of revealing themselves and possibly facing criminal sanctions, plus an ambivalent attitude to such things as intellectual property rights, might make it unlikely that they would wish to commence litigation. With Banksy, however, I would be very much more cautious, given the purposeful business structure behind his seemingly outlaw approach to life and art.


*Pest Control Office styles itself as a handling agent for Banksy. Needless to say there is no evidence that Banksy himself is either of the current directors of the company. In its published accounts for 2013, the company had a net worth of £2,421,915, so not exactly a two bit outfit.

[retrocausality]

Thanks for that Andy! Very useful and informative!

As usual, the law is less straightforward than it initially appears.

[retrocausality]

Incidentally, on the trademark side of things, doesn't Pest Control need to be actively trading using the trademark in any given class in order to retain protection on that class?

As far as I can tell, it's not possible to buy "official" Banksy clothing from Pest Control. Does that not make the trademark disputable?

[AndyJ]

Hi Phil,
Yes a trade mark can be revoked for non-use unless there are valid reasons for the non-use. But use either by the proprietor or by a licensee, would count as use. Clearly the trade mark 'Banksy' has been used in certain contexts, but I doubt if there has been much if any use over a 5 year period in some of the classes for which it has been registered, such as, for instance, Class 18: Leather goods and goods of imitation leather; trunks and travelling bags; bags, luggage; umbrellas.
If you wished to, you or any one else, could apply for revocation of the registration in those classes where non-use is claimed, and it would only cost you £200 for the pleasure. However, there are quite a few steps to go through to bring proceedings before the Tribunal, and of course the registrant is given time to file a defence. So it is by no means straightforward.
Andy

[retrocausality]

Hi Phil,
Yes a trade mark can be revoked for non-use unless there are valid reasons for the non-use. But use either by the proprietor or by a licensee, would count as use. Clearly the trade mark 'Banksy' has been used in certain contexts, but I doubt if there has been much if any use over a 5 year period in some of the classes for which it has been registered, such as, for instance, Class 18: Leather goods and goods of imitation leather; trunks and travelling bags; bags, luggage; umbrellas.
If you wished to, you or any one else, could apply for revocation of the registration in those classes where non-use is claimed, and it would only cost you £200 for the pleasure. However, there are quite a few steps to go through to bring proceedings before the Tribunal, and of course the registrant is given time to file a defence. So it is by no means straightforward.
Andy

Fair enough.

And presumably even if you had use of the trademark, you still couldn't use his artwork because of copyright, nor could you in any way insinuate or allow the customer to think that your Banksy Umbrella had anything at all to do with Banksy the artist, due to it being "passing off"?

[AndyJ]

Hi Phil,
The legitimate use of a trade mark (because you owned that trade mark for instance) on goods or services which originated from the source to which the trade mark applied (in this case a genuine Banksy artwork) would not infringe the trade mark per se because both were genuinely connected, and as trade marks are intended to provide re-assurance to the public that what they are buying is genuinely from the source they think it is from, there would not be any conflict. I think a claim of passing-off would also fail in such circumstances, because there would be no element of misrepresentation. As an aside I think it would also be hard for Banksy or Pest Control to demonstrate the third element required for a successful passing-off claim, namely that there had been damage to the claimant, in the particular circumstances of Banksy's work, which generally amounts to criminal damage and does not generate him any direct income.
Obviously, applying a legitimate trade mark to fake goods would meet the misrepresentation criterion, and so could amount to passing-off, even though I suspect the damage element would still prove problematic.
But as you rightly say, if you use a genuine Banksy work on goods for which you have a legitimate trade mark in the name of Banksy, without his permission, you still have the problem over copyright.
However, the use of a look-alike image (ie something in the style of Banksy) on an umbrella without the use of any trade mark would be much safer, leaving the public to wonder if it was or wasn't. Here the issue of passing-off becomes difficult for the claimant, because he needs to convince the court that the artwork serves as a mark of origin rather than decoration. For an illustration (excuse the pun) of how the courts analyse this sort of issue, see this case Hearst Holdings Inc & anor v Avela Inc & ors [2014] EWHC 439(Ch)

[retrocausality]

Hi Phil,
The legitimate use of a trade mark (because you owned that trade mark for instance) on goods or services which originated from the source to which the trade mark applied (in this case a genuine Banksy artwork) would not infringe the trade mark per se because both were genuinely connected, and as trade marks are intended to provide re-assurance to the public that what they are buying is genuinely from the source they think it is from, there would not be any conflict.

Hi Andy, and thanks again for your reply!

So, if I'm reading that correctly, if I were to register "Banksy" as a trademark in a class that Pest Control doesn't have covered already, and put Banksy artwork on the item (whatever it was) then Pest Control wouldn't be able to contest the trademark?

I can't remember the details exactly, but is this a similar situation to that "Elvisly Yours" case?

I think a claim of passing-off would also fail in such circumstances, because there would be no element of misrepresentation. As an aside I think it would also be hard for Banksy or Pest Control to demonstrate the third element required for a successful passing-off claim, namely that there had been damage to the claimant, in the particular circumstances of Banksy's work, which generally amounts to criminal damage and does not generate him any direct income.

Well, he does make a lot of money from his prints and canvas works, based on his image as being anti-consumerist, so would it not be arguable in a case as this, that selling any merchandise at all in Banksy's name would be damaging to the image that is central to his ability to make money from his legitimate work?

Does "damage to the claimant" need to be quantified? What I mean is, would Banksy need to prove in court that Canvas Painting 37 could have sold for $1,000,000 at auction, had Banksy Umbrellas not been trading, but as we've damaged his reputation as an anticonsumerist, it only sold for $250,000?

Actually, thinking about it, would it not be arguable from a defence perspective that "because Banksy is a well-known anti-consumerist who actively advertises that he doesn't sell merchandise of his own, no true Banksy fan would ever believe that any merchandise they saw was genuine Banksy merchandise, therefore no misrepresentation has occurred"?

Obviously, applying a legitimate trade mark to fake goods would meet the misrepresentation criterion, and so could amount to passing-off, even though I suspect the damage element would still prove problematic.

By "fake goods" do you mean Banksy Umbrellas that have non-Banksy artwork on them?

Here the issue of passing-off becomes difficult for the claimant, because he needs to convince the court that the artwork serves as a mark of origin rather than decoration.

I don't understand where the line is between decoration and mark of origin. Wasn't there a related case between an American watchmaker or jeweller, and an organisation of some sort, like a Rotary Club or Cub Scout Group or something, where the watchmaker put the logo of the club/group on their watches as "decoration"?

For an illustration (excuse the pun) of how the courts analyse this sort of issue, see this case Hearst Holdings Inc & anor v Avela Inc & ors [2014] EWHC 439(Ch)

"AVELA has gone to the trouble of reconditioning old movie posters with Betty Boop in them and claims that its imagery is all derived from those old posters. AVELA has found what it contends is a source from which it or its licensees can reproduce images of Betty Boop which do not derive directly or indirectly from works in which the claimants own copyright. This is a form of copyright laundry and there is nothing wrong with it from a copyright point of view if it works".

Interesting... "copyright laundry" isn't a term I've heard before, but I think I've come across the concept. Are they saying they've found old Betty Boop movie posters that for one reason or another aren't protected by copyright and have made it into the public domain?

---

" The defendants deny trade mark infringement on the basis that neither they nor their customers use Betty Boop as a trade mark at all. The Betty Boop imagery appearing on the goods is purely decorative, makes no representation about trade origin and so cannot infringe. They deny passing off on the same basis. The Betty Boop imagery on the products makes no representation about trade origin at all and therefore no misrepresentation."

How can this even be arguable? Surely whoever owns the Betty Boop trademark owns it, and that's that... nobody else should even be able to make products with Betty Boop decoration on it, as the public must surely assume that Betty Boop decoration would mean Betty Boop trademark owners as the origin of the product?

(I'm sure the answer is further on in the case beyond the introduction, I just wanted to post this reply before I go on my break).

[retrocausality]

...and finished. (I dipped into a few referenced cases in between).

Interesting that the defendants felt they had a case at all, there. It all seems a bit cagey.

[AndyJ]

Blimey Phil,
Your follow-up questions are longer than the originals! You realise that this forces me to be equally long in replying.
We are now seriously departing into the world of trade mark law which rather goes against the aim of the site, so I think this must be the last of these digressions.

So, if I'm reading that correctly, if I were to register "Banksy" as a trademark in a class that Pest Control doesn't have covered already, and put Banksy artwork on the item (whatever it was) then Pest Control wouldn't be able to contest the trademark?
I can't remember the details exactly, but is this a similar situation to that "Elvisly Yours" case?

As Pest Control would not own the trade mark in the specific class, they couldn't bring a claim for infringement under s10(1), but they could use s 46 or 47 to apply for the registration of your mark to be revoked or declared invalid (in a similar way that you or anyone else can contest a registration on the basis of non-use). But they would have to prove that your use was not honest practice and somehow sought an unfair advantage which was to their detriment, otherwise the first part of section 10(6) would apply:

(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.
But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.

because you would be supplying genuine Banksy works (assuming the copyright issue had been resolved) with a genuine trade mark for the class of goods you were marketing. And yes, to a certain extent the Elvisly Yours case is relevant here if only because of the court's finding that there was no protection in English law [at the time, the Trade Marks Act 1938] per se of the right to exploit a celebrity's name, but in light of the later decision in Irvine, this is arguably less true today.

Well, he does make a lot of money from his prints and canvas works, based on his image as being anti-consumerist, so would it not be arguable in a case as this, that selling any merchandise at all in Banksy's name would be damaging to the image that is central to his ability to make money from his legitimate work?
Does "damage to the claimant" need to be quantified? What I mean is, would Banksy need to prove in court that Canvas Painting 37 could have sold for $1,000,000 at auction, had Banksy Umbrellas not been trading, but as we've damaged his reputation as an anticonsumerist, it only sold for $250,000?
Actually, thinking about it, would it not be arguable from a defence perspective that "because Banksy is a well-known anti-consumerist who actively advertises that he doesn't sell merchandise of his own, no true Banksy fan would ever believe that any merchandise they saw was genuine Banksy merchandise, therefore no misrepresentation has occurred"?

I really don't know how a court would seek to establish damage in the case of Banksy, given that his 'goodwill' (hardly an appropriate description) is based more on his notoriety rather than as a bona-fide trader.

By "fake goods" do you mean Banksy Umbrellas that have non-Banksy artwork on them?

Yes that is what I meant. Somewhat like a car showroom selling "BMWs" which were actually re-badged Skodas.

I don't understand where the line is between decoration and mark of origin. Wasn't there a related case between an American watchmaker or jeweller, and an organisation of some sort, like a Rotary Club or Cub Scout Group or something, where the watchmaker put the logo of the club/group on their watches as "decoration"?

Hopefully if you have now read the Betty Boo judgment, you will see how the court wrestled with this distinction. Was the picture of Betty Boo on a product mere decoration, or a statement to the buying public that the product was officially licensed? Contrast this with the court's finding in Reed where Mr Reed argued that the word Arsenal on a garment was a token of allegiance. I believe the US court case you are thinking of is Omega SA v Costco Corp.

"AVELA has gone to the trouble of reconditioning old movie posters with Betty Boop in them and claims that its imagery is all derived from those old posters. AVELA has found what it contends is a source from which it or its licensees can reproduce images of Betty Boop which do not derive directly or indirectly from works in which the claimants own copyright. This is a form of copyright laundry and there is nothing wrong with it from a copyright point of view if it works".

Interesting... "copyright laundry" isn't a term I've heard before, but I think I've come across the concept. Are they saying they've found old Betty Boop movie posters that for one reason or another aren't protected by copyright and have made it into the public domain?

The copyright issue was not addressed at this particular trial and is subject to further proceedings. But suffice it to say, it's very messy because it involves US copyright going back over many decades.

" The defendants deny trade mark infringement on the basis that neither they nor their customers use Betty Boop as a trade mark at all. The Betty Boop imagery appearing on the goods is purely decorative, makes no representation about trade origin and so cannot infringe. They deny passing off on the same basis. The Betty Boop imagery on the products makes no representation about trade origin at all and therefore no misrepresentation."

How can this even be arguable? Surely whoever owns the Betty Boop trademark owns it, and that's that... nobody else should even be able to make products with Betty Boop decoration on it, as the public must surely assume that Betty Boop decoration would mean Betty Boop trademark owners as the origin of the product?

There are two problems with trade marks in this context: firstly the same or substantially the same mark can be legally owned and used by more than one company or individual even where the goods are similar (so-called co-existence) But equally the disputes of this sort can be lengthy and cross many jurisdictions, eg the Budweiser cases. Alternatievly the marks may be the same but used in different classes (eg Apple Records and Apple Inc) who both operate within different segments of the music business. And secondly the territorial nature of Trade Mark registration is increasingly unsuitable in a more globalised world and on the internet.

[retrocausality]

Blimey Phil,
Your follow-up questions are longer than the originals! You realise that this forces me to be equally long in replying.
We are now seriously departing into the world of trade mark law which rather goes against the aim of the site, so I think this must be the last of these digressions.

Haha, sorry Andy.

And thanks again for your replies!