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The Andy Warhol Foundation is asking a federal judge to dismiss a lawsuit brought by The Velvet Underground over the famous banana image that adorns its classic 1967 album, The Velvet Underground & Nico.
In the motion, the Warhol Foundation makes the point that the band hasn’t been in existence for 40 years, doesn’t have a current licensing program on the claimed trademark and is under no legal threat so it can’t pursue a case.
The influential band, whose members included Lou Reed and John Cale, brought the lawsuit in January, claiming the Andy Warhol-created cover art’s copyright was in the public domain and that the trademarks belonged to the band, as it “became a symbol, truly an icon, of the Velvet Underground” for decades.
The following month, the band amended the complaint, taking out many of the references to the public domain, but continuing to press the idea that the Warhol Foundation didn’t have rights to the image and was infringing the band’s marks by licensing them on iPod products.
On Monday, the Warhol Foundation responded by demanding that the entire lawsuit be tossed.
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.
Maybe The Velvet Underground should reunite and reissue its albums.
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