24ore

Banksy vs. 24 Ore Cultura: the Downside of Anonymity

March 19, 2019 / Blog, Case Comment, Featured Author

On January 15, 2019, the Court of Milan, Specialized Division in Business Matters, rendered its decision on the petition for interim relief filed by Pest Control Office Limited, the English company managing the IP rights of the famous street-art artist Banksy, against the Italian company 24 Ore Cultura S.r.l., which organized the successful exhibition “A VISUAL PROTEST. The art of Banksy”, currently held at the MUDEC museum in Milan.

The artist – who is known for being contrary to the economic exploitation of his artworks – did not authorize the exhibition, nor the merchandising sold at the museum’s bookshop.

Therefore, Pest Control Office Limited filed injunctive proceedings before the Court of Milan in order to stop 24 Ore Cultura from using the sign “Banksy” – registered as a EU trademark by Pest Control Office Limited itself (which also registered two of the artist’s most famous artworks as EU trademarks) – within the name of the exhibition, on the exhibition’s catalogue and in connection with merchandising. Pest Control also asked to stop the unauthorized display of his artworks’ reproductions (mainly consisting of silk-screen printings in series lent by private collectors).

With its recent decision, the Court of Milan recognized the infringement of the “Banksy” trademark with respect to the merchandising activity carried out by 24 Ore Cultura, while considered that the use of the artist’s name for the purposes of an event devoted to his work constituted a descriptive use of the sign “Banksy”.

The Court also confirmed its position already expressed in other decisions in which it deemed that the display and the reproduction of artworks is a right which has to be explicitly granted at the moment of the sale of the artwork itself and, consequently, that this right is not automatically granted to the buyer along with the transfer of corpus mechanicum of the artwork. Therefore, a private collector cannot grant the economic exploitation rights (such as the reproduction and public display rights) on an artwork belonging to his own collection without an explicit authorization thereof at the moment of the sale of the artwork itself.

However, in the case at issue, the Court decided not to stop the ongoing exhibition and the distribution of the exposition’s catalogue by the defendant since, probably in order to safeguard its anonymity, Banksy did not file the injunctive proceedings himself but through the company Pest Control Office Limited and this company did not prove to be entitled to challenge the unauthorized reproduction and display of Banksy’s artworks.

Hence, the need of protecting his own identity (often the object of fanciful speculations by the press and the enthusiasts in last years) weakened the artist’s possibility to fully enforce his rights in Court.

giacomo_moleri

Author : Giacomo Moleri

Partner Spheriens

Giacomo handles mainly extrajudicial matters and has extensive experience in the protection of intellectual property rights on the Internet. He assists clients in domain name dispute resolutions and in protecting their intangible assets on all digital platforms. Giacomo also manages anticounterfeiting programs, both domestically and internationally, and handles administrative proceedings before the Italian PTO (Patent and Trademark Office).

Giacomo has worked for Siblegal, now Spheriens, since its foundation in 2009 and became a partner of the firm in 2017. From 2006 to 2008, he worked for the consulting firm SIB (Società Italiana Brevetti), in the legal department headed by Pier Luigi Roncaglia. In the summer of 2007, he was a visiting lawyer at the Washington offices of Arent Fox.

Giacomo regularly holds lessons at the Master course in Luxury Goods Management – EMLUX organized by the Università Cattolica of Milan. He is also a member of the EU Subcommittee of the Design Rights Committee of INTA (International Trademark Association).

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