A UK company takes a Museum in Milan to Court.
In a January post I have dealt with some legal issues related to street art, predicting that Courts would soon have to deal frequently with such issues. It was not that hard to predict such development, given the multiple legal implications linked to the performances of street artists. However, my contribution was just posted on this blog, when the local Press reported about a lawsuit brought before a First Instance Court in Milan against an exhibition of a significant number of works of the – probably most mysterious and internationally known – street artist and writer.
In November 2018 the Museo delle Culture di Milano – MUDEC (i.e. the Museum of the Cultures in Milan) opened an exhibition - «A Visual Protest. The Art of B…» - on a significant number of the artist’s works: paintings, photographs, videos and numbered prints. When the artist was asked – at some point of the exhibition’s preparation - whether he would agree to the initiative, he apparently denied consent. Despite the artist’s position, the organizers decided to proceed with their project, though qualifying the exhibition as “not authorized”, “unofficial” (on the catalogue’s frontpage).
While being very strict about maintaining his anonymity, the artist holds trademarks with respect to its name “B…” as well as to several of his works and has assigned the management and protection of his IP rights to a UK based legal entity. Apparently, somebody of the artist’s entourage visited the exhibition in Milan and found out that in the museum’s bookshop gadgets were on sale with a clear reference to B’s works, such as: reproductions of two of B’s paintings, the exhibition’s catalogue, items with B’s name on them (e.g. pencils, personal organizers, bookmarks, postcards, numbered prints, etc.), a booklet with B’s interviews.
Going to Court.
Feeling all but happy with the merchandising performed to promote the exhibition, the UK based company managing B’s rights decided to take legal action and sued the museum MUDEC before the IP Section of a First Instance Court in Milan.
Specifically, the plaintiff:
- objected to the exhibition’s title (containing the name “B…”, registered as a trademark) as well as to the use of two of the artist’s works (also covered by a trademark registration),
- took issue with the exhibition’s catalogue and with the booklet featuring interviews of the artist,
- claimed that through the merchandising acts of unfair competition had been performed (likelihood of confusion with respect to the origin and the author of the products offered for sale as well as unfair and incorrect practices, capable of damaging the artist’s business).
Injunctive relief was also sought through a request for an interim injunction preventing the continuation of all questioned uses.
The Court’s position on the request for injunctive relief.
First, the Court dismissed plaintiff’s argument against the use of the name “B…” to announce and promote the exhibition. Focusing the event exclusively on the work of a specific individual, the use of the artist’s name to promote and draw attention towards the exhibition was justified and not suitable to suggest the existence of a ‘particular relationship or association’ with such artist. Hence, such use resulted in a ‘common practice’ to direct the public towards the object/content of an exhibition, not infringing on the artist’s IP rights.
The Court then went on to consider the - also questioned - presence (in the exhibition’s catalogue) of several reproductions of the artist’s works (two of them being covered by specific trademark registrations). It found that most of the photographs used for the catalogue referred to privately owned works and that the owners had given permission. Thus, it held that ownership did not automatically imply the transfer of the right to authorize reproductions (which the local Copyright Act – in absence of a contractual agreement - reserves to the author). Therefore, there could be an issue concerning the works reproduced in the catalogue. However, the plaintiff – not being the author – had failed to substantiate that he was entitled to contest infringement of the right of reproduction. Instead, he had based his claim on a trademark violation but the provisions protecting trademarks could not be stretched to a point where a case like the occurring one was covered by them. The author (i.e. the artist) would certainly be entitled to an action meant to defend his right of reproduction but to the purpose he would have to reveal his identity (something that clearly would not be in B’s interest).
Finally, the Court agreed on plaintiff’s request to halt all sales of merchandising material bearing the name “B…” (benefitting from trademark protection) as such material consisted in generic items, not linked to the exhibition’s context but pursuing a primarily commercial purpose, completely separated from the uses typical for the trademark “B…”. Therefore, it considered that infringement had occurred and ordered - as a temporary measure – all merchandising material to be removed from the museum's bookshop.
Exhibition organizers need to be careful when the names of authors - or reproductions of their works - present at the event are used in merchandising. There are potential legal implications to consider. You better make sure that you can do what you plan to do!