The controversial Andy Warhol Foundation has asked a federal judge to dismiss a lawsuit brought by The 1960’s band The Velvet Underground over the iconic banana image that features on the cover of their 1967 album, The Velvet Underground & Nico. The Foundation raises the question that if the band hasn’t been in existence for 40 years, does it have a current licensing program on the disputed trademark and if so is it under a legal threat enabling it to pursue a case. The Warhol Foundation has moved that the entire lawsuit be thrown out.
By suggesting that the Banana Design is in the public domain, or at very least, by not asserting their own copyright interest in the image, the band has given the Warhol Foundation the opening to argue that there isn’t a justiciable controversy that needs adjudication. The Foundation says that it has provided the band a “covenant not to sue for copyright infringement,” which could compel the judge to question why she needs to intervene. As for the trademark claims, the Warhol Foundation says that “trademark rights exist only in relation to specific goods and/or services” and that a word, symbol or design can function as a valid trademark only if the mark is part of an ongoing business.
The Velvet Underground says that the Banana Design is its own iconic symbol, but the Foundation counters that point by saying that the band hasn’t engaged in the music performing business since 1972, when the band broke up. As for licensing activity, the band’s complaint only mentioned that it once licensed the image for use in an Absolut Vodka ad. However, that was 11 years ago, which Joshua Paul, the attorney for the Foundation, writes “provides no support for Plaintiff’s allegation of ‘ongoing’ licensing activity.”
“Plaintiff has put the cart before the horse,” adds the motion to dismiss, suggesting that the Velvet Underground would need to use and provide notice of the Banana Design in commerce.