In January 2012, the legendary rock band The Velvet Underground sued The Andy Warhol Foundation For the Visual Arts in a dispute over use of the iconic banana logo featured on the cover of the band’s debut album, The Velvet Underground & Nico. Credited as the 13th best album in history by Rolling Stone magazine, the album is also notable because its cover art was created by one of the most well-known artists of the era, Andy Warhol. In fact, the art was such a hit with the band that it was later incorporated into future Velvet Underground album covers and merchandise.
In 2011, the Andy Warhol Foundation began licensing a number of Warhol’s works to Incase, which makes protective cases for iPhones. One of the first images used in this agreement was the banana from the album cover. As Warhol not only created the artwork, but was also the band’s manager at the time and was listed as the producer of the album, the Foundation believes it has a copyright in the image. As alleged in the suit, The Velvet Underground disagrees.
The first count The Velvet Underground charged the Foundation with relates to this copyright issue. The band asked the Court to declare that the Foundation has no such copyright to the banana image. After learning of the suit, the Foundation irrevocably agreed not to sue The Velvet Underground on any grounds relating to copyright of the image. On September 7, the Court agreed with the Foundation’s contention that the copyright claim should be dismissed because no controversy exists under the copyright in light of the Foundation’s inability to sue. Federal courts are Constitutionally prohibited from issuing opinions in cases where no real controversy exists.
Much more interesting are The Velvet Underground’s three pending claims related to the use of the banana as a trademark. Because of the longstanding use of the image with the band’s products, The Velvet Underground argues that the banana has gained a secondary meaning in the minds of consumers as an identifier of the band’s music and merchandise, especially in light of there being no apparent connection between bananas and musicians. The band asserts that if the Foundation is permitted to license the image, consumers will be confused as to the source of the products, charging the Foundation with False Designation of Origin under federal law and Unfair Competition and Misappropriation under New York law.
Predictably, the Foundation has denied the band’s allegation and has counterclaimed that it, not The Velvet Underground, owns trademark rights in the image. It also alleges that the stylized Andy Warhol signature that appears on the album cover and is reproduced on merchandise violates a trademark owned by the Foundation.
Unfortunately for us, it is likely that none of these issues will be ruled upon for several more months. In the mean time, the music lovers behind this blog will be watching and waiting.
Posted by Keith Jones