Who is entitled to Andy Warhol’s banana design?

The American Partnership "The Velvet Underground" has filed suit in federal court in Manhattan against the foundation "The Andy Warhol Foundation For The Visual Arts, Inc."

The Velvet Underground" (hereinafter also referred to as "VU") is a partnership of musicians John Cale and Lou Reed.  "The Andy Warhol Foundation For The Visual Arts, Inc." (hereinafter also "the Andy Warhol Foundation") is the foundation that administers the estate of the artist Andy Warhol, who died in 1987, "The Andy Warhol Foundation For The Visual Arts, Inc." (hereinafter also "the Andy Warhol Foundation").

The parties are fighting over the rights to the banana design (from 1966) by the hand of the artist Andy Warhol, who died in 1987, which was printed on the album cover of The Velvet Underground's debut album entitled "The Velvet Underground and Nico" (1967), nicknamed "The Banana Album."

VU is the entity within which a group of musicians performed under the name "The Velvet Underground" from 1964 to 1973. Andy Warhol had active involvement with the band starting in 1965. He reportedly created the banana design at the time, bearing the text "peel slowly and see," using an element from an advertisement.

VU objects, the petition says, to the fact that the Andy Warhol Foundation has granted licenses to third parties (including manufacturers of Iphone and Ipad sleeves) for the use of the banana design.

VU argues that the Andy Warhol Foundation is infringing on VU's figurative mark. The Andy Warhol Foundation, on the other hand, disputes the existence of any of VU's figurative marks and it, in turn, invokes its (possible) copyright on Warhol's design.

Legal grounds

In its petition, VU seeks, in summary:

• a declaratory judgment that the Andy Warhol Foundation does not have copyright on the banana design;
• transfer to VU of any profits made by the Andy Warhol Foundation and damages for the loss suffered by VU, including legal costs
• A injunction against granting further licenses;

VU argues that the banana design was never published with a so-called "copyright notice", and therefore ended up in the copyright-free "public domain".

VU further argues that the design is sufficiently distinctive, and has acquired a protectable "secondary meaning" as a result of which the public associates the figurative mark with The Velvet Underground and its reputation. VU claims to have licensed the figurative mark for over 25 years. VU further contends that the Andy Warhol Foundation creates deception and unnecessary confusion about the origin of licensed products, and also unlawfully benefits from the reputation and goodwill of The Velvet Underground. VU further argues that the Andy Warhol Foundation has more than enough alternative works of art at its disposal to license. The choice to license the use of the "legendary" banana is evidence that the Warhol Foundation is unlawfully "piggybacking" on the band's goodwill, according to VU.

Oostwaard Comments
According to attorney Paige Mills, VU has a tough case. VU apparently did not consider the figurative mark valuable enough to register. So what is her damage? Moreover: according to her own statements, the figurative mark has so far been used in the context of music performances and for vodka advertisements. It is questionable whether her alleged rights to the figurative mark extend so far that she can successfully oppose use for Ipad sleeves. After all, a likelihood of confusion does not seem to be an issue. Mills wonders whether Messrs. Reed and Cale should be so happy if the claim succeeds. After all, it would entail establishing that anyone can use the banana design, as long as it does not refer to music performances or vodka, with all the dangers for less ear-friendly uses that this entails, according to Mills.