The Andy Warhol Foundation for the Visual Arts called for the dismissal of a lawsuit by the Velvet Underground that claimed the foundation violated the band’s trademark for the banana design Warhol created for an album cover.
The foundation, which licenses merchandise based on the late artist’s designs, asked U.S. District Judge Alison Nathan to throw out the trademark infringement suit, in a filing today in New York federal court that answered the complaint by the band and its founders Lou Reed and John Cale.
Warhol’s foundation said that the band can’t claim trademark infringement because it hasn’t identified any uses for the design. The foundation also said it had an agreement with the band to not bring legal action against it over the copyright for the design.
“Because plaintiff no longer faces an imminent live threat of suit for copyright infringement, the declaratory relief sought by plaintiff no longer presents the court with a justiciable controversy,” the New York-based foundation said in court papers.
The Velvet Underground sued the Warhol Foundation in January claiming that it has trademark rights to the banana design, which has become a “symbol, truly an icon” of the group. The band also said the foundation can’t claim a copyright for the design because the album appeared without a copyright notice and no one registered it.
“Velvet Underground’s use and application of the design to symbolize the group and its whole body of work has been exclusive, continuous and uninterrupted for more than 25 years,” the band said in the complaint.
Christopher Whent, a lawyer for the Velvet Underground, said he had no immediate comment about the motion to dismiss.
The band, which began around 1965 and remained active until about 1972, formed an artistic collaboration with Warhol. He designed the cover of their first commercial album, “The Velvet Underground and Nico,” released in 1967, using an illustration of a banana taken from an advertisement, according to court papers. Warhol died in 1987.
The Velvet Underground also claimed that the ad with the banana was in the public domain and thus not eligible for copyright protection.
Warhol’s copyrighted works have a market value estimated at more than $120 million and the foundation has earned more than $2.5 million a year from licensing the designs, according to court papers.
The Velvet Underground seeks a judicial declaration that the foundation has no copyright to the design, an injunction barring the foundation from licensing the artwork and monetary damages. It requests a jury trial.
The album, which was a commercial failure at the time of its release, has been lauded by critics as one of the most influential rock recordings. It was released by MGM’s Verve Records, the catalog of which was acquired by Vivendi SA’s Universal Music Group.
Reed sang and played guitar and wrote most of the songs, some of them in the persona of a drug addict. Cale, who was influenced by avant-garde composers, played an amplified viola.
The case is Velvet Underground v. The Andy Warhol Foundation for the Visual Arts, 1:12-cv-00201, U.S. District Court, Southern District of New York (Manhattan).