While allowing a trademark dispute to advance, U.S. District Judge Alison Nathan in New York has tossed the Velvet Underground’s request for a finding that the Andy Warhol Foundation has no copyright interest in a legendary banana design because the case is not ripe for adjudication. Warhol created the iconic “peelable” banana cover art for the Velvet Underground’s 1967 album, The Velvet Underground & Nico. Since then, the band has been licensing the famous design for consumer goods and promotion of reunion concerts. This album holds down spot 13 on Rolling Stone‘s list of 500 Greatest Albums of All Time, beating out the likes of the Beatles’ Abbey Road and Nirvana’s Nevermind. The album was also added to the 2006 National Recording Registry by the Library of Congress, which underscores the importance of the preservation of its legacy. Those who consider themselves music aficionados know this album and its cover artwork.
But in 2009, the Andy Warhol Foundation for the Visual Arts Inc. sued the Velvet Underground for copyright infringement to gain exclusive right over the image. That’s whenthe trouble began. The band demanded that the foundation stop licensing the image because it could “create consumer confusion over the good’s connection to the Velvet Underground.” The band also asserted that the image has a secondary meaning as its mark. The foundation responded that it “may” have a copyright interest in the design.
Band co-founders, John Cale and Lou Reed, filed suit seeking judgment that the foundation had no copyright in the banana design. Read the suit here. They argued the image Warhol used for the cover came from an advertisement in the public domain, that no one sought to copyright the illustration at the time, and therefore it was in the public domain and could not be copyrighted. Further, the band argued: “The banana design is a significant element of Velvet Underground’s ongoing licensed merchandising activity,” and that use of the design “has been exclusive, continuous and uninterrupted for more than 25 years.”
The foundation stipulated it would not sue them for copyright infringement, saying it agrees “unconditionally and irrevocably … to refrain from making any claim(s) or demand(s), or from commencing, causing or permitting to be prosecuted any action in law or equity” against the Velvet Underground.
So Nathan dismissed the copyright part of the suit, because there was no “immediate, realistic prospect of injury to the Velvet Underground from the Warhol Foundation’s asserted copyright.” The court allowed the trademark claim to continue. Rad more about this case here.