All Tomorrow's Lawsuits: The Velvet Underground v. Andy Warhol

I am a big admirer of Andy Warhol. I believe his impact on 20th century art and culture is incalculable. I am also a big fan of The Velvet Underground so, of course I was fascinated to discover that the band (actually a partnership comprised solely of Lou Reed and John Cale) had just filed suit against the Andy Warhol Foundation, apparently because the Foundation was seeking to license the famous banana design from the band’s first album to a company that manufactures iPhone and iPad covers.

The complaint in the case is instructive. It reads like a concise history of Warhol and The Velvet Underground. One fascinating tidbit: The band received a $3,000.00 advance from MGM which they split with Warhol. It also spells out a compelling legal challenge. The Velvet Underground assert trademark rights in the banana, although in the 45 years since the fruit first appeared on The Velvet Underground and Nico album , the group never sought to register a federal trademark in the design.

Warhol’s apparent defense is that it has a copyright in the banana. However as The Velvet Underground’s complaint demonstrates fairly conclusively Andy Warhol never asserted a copyright in the work during his lifetime and because it was published in 1967 (eleven years before the implementation of the 1976 Copyright Act) it may well have been injected into the public domain for copyright purposes. The band is seeking a declaratory judgment to this effect.

I was initially skeptical of the band’s trademark claims but the complaint lays out a convincing explication of the band’s use of the mark over the past four decades. Particularly interesting is their 2001 license of the design to Absolut Vodka, a license which was apparently not questioned by Warhol. I also wonder who is licensing all those Velvet Underground t-shirts?

I don’t know that I’ve ever read a case that pitted copyright against trademark in such a unique way. There will most likely be collateral issues. For example, perhaps MGM’s successor may assert some sort of copyright interest in the banana design. Also, what is the status of Warhol’s original artwork? This is certainly going to be an interesting case to watch.