Velvet Underground’s Banana Trademark Suit V. Warhol Foundation To Proceed Even As Copyright Claim Fails

By Joseph Mandour on September 11, 2012

Velvet_Underground_and_Nico2-164x164 Los Angeles — A New York federal judge on Friday junked the Velvet Underground’s copyright claim against the Andy Warhol Foundation for the Visual Arts Inc. over Warhol’s iconic banana cover art for the band’s debut album, but the band’s trademark infringement claims will proceed forward.

Judge Alison Nathan dismissed the portion of the Velvet Underground’s complaint that sought a declaratory judgment that the foundation has no copyright in the banana image. The foundation had already previously agreed not to sue the Velvet Underground for copyright infringement, so there is no justiciable controversy between the two over any copyright in the banana design, she said.

The remainder of the suit, which now comprises three claims for trademark infringement concerning the foundation’s plans to license the banana image to a company for a series of Warhol-themed iPhone covers, will still go on as planned. Fact discovery in the case is currently scheduled to wrap up by the end of the year, and expert discovery is due in February.

The Velvet Underground broke up in 1972 and has not performed in concert since a set of European reunion shows in 1993, but earlier this year frontman and primary songwriter Lou Reed and multi-instrumentalist John Cale sued the Warhol foundation in their capacity as the general partners of the band.

The band’s landmark 1967 album bearing the banana cover, The Velvet Underground & Nico, sold few copies upon its release but eventually came to bear great influence on many musicians following the disparate musical trails the band blazed. The album is now widely recognized as one of the finest and most prescient rock albums of all time.

On that basis, Reed and Cale asserted in their complaint that the banana artwork has become so identified with the band that it is immediately recognized among the public as the band’s symbol. The band has itself licensed the banana for use on a variety of consumer goods, from t-shirts to key chains to pillowcases.

The foundation wrote to the band in December 2009 claiming that the band’s use of the banana infringed the foundation’s copyright. The band rejected the copyright claim, and countered that the banana was in fact a trademark of, and had secondary meaning associating it with, the Velvet Underground.

In 2011 the band learned of the foundation’s plans to license four Warhol works including the banana to Incase for a new series of iPhone and iPad cases, sleeves and bags. The band demanded that the foundation cease its licensing activities, claiming trademark infringement.

After the Velvet Underground originally filed the action but before it filed its second amended complaint, which included the copyright infringement declaratory judgment claim and the three trademark infringement claims, the foundation gave the band a covenant not to sue for copyright infringement.

The foundation argued that the court had no jurisdiction to hear the declaratory judgment claims because the covenant not to sue eliminated any actual controversy between the parties over the banana’s copyright, and the judge agreed.

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