Banksy’s (visual) protest brought to Court in Italy

Pest Control Office Limited (the company acting on behalf of the artist Banksy) has recently sued 24 Ore Cultura S.r.l. (part of the 24 Ore Group, a leading multimedia publishing group in Italy) seeking interim measures against the alleged unauthorized reproduction of Banksy’s works, and alleged unlawful exploitation of certain registered trademarks, in connection with an exhibition called “A Visual Protest. The Art of Banksy” held at Museo Delle Culture (Mudec) in Milan.

The attempt to exploit the famous street artist for commercial purposes is certainly not new. In the past, Banksy seemed to have been reluctant to bring legal action for copyright or trademarks infringements. In 2014, when the exhibition “Stealing Banksy” was held at the ME hotel in London (where 10 of his artworks were shown and auctioned), he decided not to bring a lawsuit against the organisers. Instead, he commented that “the Stealing Banksy exhibition taking place in London […] has been organised without the involvement or consent of the artist”. He added angrily: “this show has nothing to do with me and I think it’s disgusting people are allowed to go displaying art on walls without getting permission”.

In July 2018, Pest Control Office Limited was contacted by the appointed curator, Gianni Mercurio, to organise the Mudec exhibition. The reaction of the company handling Banksy artworks was clear: neither Pest Control Office Limited, nor the artist, would give their consent to the use of the artist’s name and images for the title, catalogue, tickets and any other merchandising/advertising purposes.

In October 2018, the organisers declared that the exhibition, including more than 70 pieces by Banksy, was ready for display. At the same time, a disclaimer was included both online and in the paper catalogue specifying that the contents were unofficial and unauthorized by the artist.

Following the exhibition’s opening, Pest Control Office Limited filed a request for interim measures before the Court of Milan on the following grounds:

  • The company owns trademarks related to the artist, particularly the denominative trademark ‘Banksy’, together with the figurative trademarks representing his ‘Girl with Balloon’ and ‘Flower Bomber’;
  • 24 Ore Cultura S.r.l. used these trademarks to advertise the exhibition (for instance, by mentioning the word ‘Banksy’ in the title and reproducing, among other works, the ‘Girl with Balloon’ and ‘Flower Bomber’ in the catalogue) and in stationery products;
  • Such use and exploitation of the artist’s trademarks is unauthorised and – according to Pest Control Office Limited – constitutes trademark infringements under Article 9 of the EU Regulation No. 1001/2017, and unfair competition under Article 2598 of the Italian Civil Code, as it constitutes undue exploitation of the appeal and reputation of the artist’s distinctive signs;
  • The reproduction of the artist’s works in the catalogue constitutes a violation of Italian copyright law which clearly establishes[1] that – unless otherwise agreed to by the parties – the right to reproduce an artwork is not automatically transferred by the artist to the buyer upon the sale of the artwork.

The Court of Milan[2] found that the museum was entitled to mention the artist in the exhibition’s title, poster and tickets based on a specific legal ground (so-called descriptive use of a trademark[3]), a copyright exemption pursuant to Article 21 of the Italian Industrial Code. In other words, it is lawful and consistent with standard practice in the art sector to mention the name of the artist whose works are included in the exhibition, with the purpose of informing the public of the content of the exhibition.

The Court observed that Banksy’s trademarks are valid and enforceable in Italy.  Their use on stationery products has no informative purpose, has been used to commercialise products that have no connection with those referenced in the trademark registrations, accordingly such use constitutes a trademark infringement. Consequently, the Court prohibited the commercialisation of the products in question.

Turning to the alleged copyright infringement, the Court held that, as there is no evidence that the owners of Banksy’s artworks included in the exhibition were assigned the right to reproduce the artworks.  The economic rights connected with the commercial exploitation of these reproductions continue to be vested in the artist himself. The claim submitted by Pest Control Office Limited was rejected because (i) the company lacked legal standing on this copyright point and (ii) the artist is not a party to the proceedings (since he insists on preserving his anonymity).

Interestingly, the Court queried whether street art should receive copyright protection in Italy. The Court commented that street art is mainly characterised by “the creation in a public space (which implies the free and lawful display of such types of art [in any context] based on a waiver [by the artist] of all rights granted under copyright law), and the fleeting nature of each artwork ([which is created] in an ideological context that directly conflicts with copyright law and/or the commercial channels of this sector)”.

In summary, an artist cannot prevent his name from being used to inform the public of the content of an exhibition including his works.  However, he can object to his name (in this case registered as a trademark) being used on commercial products without his consent.  Whilst the artist can bring a claim of copyright infringement if he did not assign (or licence) copyright to the owner of the artwork, that claim cannot be brought by a company even if it represents the interests of the artist.  Only the artist can make the claim.  These principles are of general application and apply to street art (in this case removed from its original ‘street’ location).

[1] See Article 109 of Italian Copyright Law.

[2] In an interim order issued on 14 January 2019 (proceedings No. 52442/2018).

[3] Namely, the fair use of a trademark for mere informative purposes, without free riding and other forms of commercial implication.

Francesca Barra and Pierre Valentin