Serious Velvet Underground fans may disagree about the finest album of the band’s brief career, but there’s no question that the group is best known for its debut 1967 record, The Velvet Underground & Nico, which sported a banana print design by Andy Warhol on the cover.
Fast-forward 45 years: the band’s cofounders Lou Reed and John Cale are still rocking, Warhol is long dead, and the Velvet Underground is locked in litigation with Warhol’s estate over the iconic banana print that helped propel the band to fame. On Sept. 7, the Andy Warhol Foundation scored an early victory in The Velvet Underground v. The Andy Warhol Foundation for the Visual Arts, 12-cv-00201,, when a judge in New York ruled that Reed and Cale can’t seek a ruling that the foundation doesn’t have a copyright on the banana image.
The Velvet Underground, now a partnership run by Reed and Cale, targeted Warhol’s estate in January, after the estate agreed to let a company called Incase use some of Warhol’s most famous works on a new line of iPhone cases. One of those works was the banana image, which prompted Reed and Cale to hire the Law Offices of Clifford James to sue the Warhol Foundation for trademark infringement in U.S. district court in Manhattan. In the suit, they argued the banana design had taken on a second meaning as “a symbol, truly an icon, of the Velvet Underground.” Reed and Cale also sought a declaratory judgment that Warhol’s estate had no copyright in the banana design.
Southern District Judge Alison Nathan (See Profile) on Sept. 7 dismissed the Velvet Underground’s claim for a declaratory judgment. She ruled that there’s no need to decide the question, because the Warhol Foundation signed a broad covenant not to sue the band for copyright infringement after the litigation got under way.
The band’s lawyers had argued that the copyright ownership issue was still ripe for declaratory review, despite the covenant not to sue. While the covenant may have precluded the foundation from raising copyright infringement claims, it didn’t resolve the question of who owns the copyright to the banana image, they argued. Nathan rejected that argument, writing that “an actual controversy cannot be based on the mere existence of the Warhol Foundation’s claim to copyright infringement.” The judge has yet to rule on the band’s trademark infringement claims.
Also on Sept. 7, the Warhol Foundation’s lawyers at Collen IP filed a letter stating that the estate will soon file a batch of counterclaims. According to a draft of the estate’s brief, they will argue that the Velvet Underground has unclean hands because it licensed the banana image to third parties, including Absolut Vodka (which used the image as part of an ad campaign).
Because Warhol’s signature is displayed prominently under the image, “such use is likely to confuse consumers into believing that the Warhol Foundation or other authorized representative of Andy Warhol has sponsored, approved, or authorized the good or service in question,” the foundation argues. The estate also plans to allege unjust enrichment, unfair competition, and trademark infringement, according to the draft.
Collen partner Joshua Paul, who represents the Warhol Foundation, declined to comment. Velvet Underground’s lawyer, Clifford James, was not available to comment.
@|Jan Wolfe, a reporter with Litigation Daily, an affiliate, can be contacted at email@example.com.