Maybe you have heard of the famous street artist known to the public as Banksy. For those of you who have not heard of Banksy, here’s four facts to catch you up to speed: (1) the name Banksy is the pseudonym for a spectacularly popular British graffiti (or, “street”) artist; (2) Banksy does not want you to know Banksy’s actual identity; (3) so far, Banksy’s efforts have been successful in making sure you do not know Banksy’s identity; and, (4) Banksy has received trademark protection for the pseudonym “Banksy” from the United States Patent and Trademark Office (hereinafter “USPTO”).
As an IP attorney, the focus of this article is going to be that fourth fact I just shared with you. I will leave it to the criminal lawyers to opine on the legality of Banksy’s artwork in the first place. However, as I know some of you will be interested in the Banksy artwork, here are a few samples from Banksy’s recent 31-day residency in New York City, entitled “Better Out Than In”, which took place in October of 2013:
You get the picture.
So this guy wants a trademark, what’s the big deal?
Essentially, the issue is improper consent.
If you want to register a name as a trademark, and the name refers to a living individual (here, I think it’s safe to assume the walls and streets of New York City did not paint themselves) then you require the written consent of that living individual. As trademark attorney Roberto Ledesma already pointed out, Section 2(c) of the Lanham Act presents an absolute bar to registration for a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent“.
Additionally, there’s a book out there called the Trademark Manual of Examining Procedure (or, the “TMEP”). This is pretty much the trademark bible. USPTO trademark examiners-the guys and gals who decide whether or not you get trademark protection-make their decisions based on (1) trademark law; and, (2) the guidance set forth in the TMEP. Well, section 813.01(a) of the TMEP reads, “where the mark comprises a … pseudonym … the record must clearly identify the actual name of the individual”.
Here’s the consent Banksy furnished to the USPTO, which is viewable via the Trademark Status & Document Retrieval (“TSDR”) system:
Two things. First, Banksy used his (or her) pseudonym (i.e., “/Banksy/”) to sign consent, which as we just discussed is not how it’s supposed to go down. Second, remember how I told you at the beginning of this post that Banksy’s efforts to remain anonymous have been successful? Apparently negotiations for trademark protection with our own USPTO have done little to disavow Banksy of his ambiguity.
Couldn’t the USPTO and Banksy reach an agreement whereby Banksy gives a legal name as consent, but in turn requests the USPTO not make that documentation public?
Sure, but if that’s the case then let’s stop and think about a few more things.
Let’s assume for the moment that the USPTO and Banksy arrived at some sort of agreement to keep the true identity of Banksy confidential. Indeed, there is likely a valid argument to be made that the Banksy artwork would depreciate in value significantly were the identity of Banksy to be revealed. However, that did not seem to stop the USPTO from requiring other artists, musicians, or entertainers, whose commercial value is at least in part attributable to their anonymity, to provide proper legal name consent for pseudonyms.
To illustrate, try this one on for size:
Or how about, this one:
Fairness to other artists who at least derive some economic value from their ambiguity or mystique is just one argument to be made against these practices by the USPTO.
The potentially more unsettling truth here is that given the nature of the Banksy canvas (i.e., City streets, sidewalks, walls, and what have you), it’s likely that at least some law is being disobeyed when the Banksy trademark goods and services come to fruition. Don’t get me wrong, I think Banksy is actually quite talented. And again, my point here is hardly to lecture about the potential vandalism or legal boundaries crossed by Banksy. Rather, what I’m getting at is this: I can’t help but shake the feeling that on some level it’s improper for one government agency (the USPTO, a branch of the federal government) to withhold an identity known to them (i.e., the real name of Banksy) from another government agency (the State of New York) whose property was tampered with.
Final thoughts on the whole “Banksy” Trademark Ordeal
I’m not making an argument against Banksy in particular receiving a trademark. I believe that this guy (or gal) does deserve to protect their goods and services. I just don’t think this was proper practice by the USPTO. Moreover, because I’m not on the inside of what went down, it’s unlikely I’ll ever know what sort of agreement was struck between Banksy and the USPTO.
I’m simply calling for a bit more transparency from a federal agency, given that the federal government is presently headed by someone who advised the nation that we’d have it were he elected.
I’m still waiting Mr. President.