Trademark Lawsuit Provides Arena for Clash of the Titans: Andy Warhol vs. The Velvet Underground

Trademark Lawsuit Provides Arena for Clash of the Titans: Andy Warhol vs. The Velvet Underground

In the movie Clash of the Titans, Liam Neeson's memorable (and often parodied) quote is: "Release the Kraken," the Kraken being a giant creature that dwells at the bottom of the sea.

To view the scene, click the image below.

Two giant creatures have been released into trademark law -- not Krakens, but pop art and rock music -- specifically, Andy Warhol vs. Lou Reed and John Cale.

Or as Liam Neeson might say, "Release The Velvet Underground."

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Lou Reed and John Cale formed The Velvet Underground in the '60s and became acquainted with Andy Warhol, who had a collaborative association with the band. According to a recent complaint filed by Reed, Cale and The Velvet Underground, the band spilt a $3000 advance with Warhol in consideration for the cover illustration for the record, The Velvet Underground and Nico. Warhol's illustration, which was furnished for the album's front cover, consisted of what is now the very famous and iconic banana design with a stylized "Andy Warhol" signature.

The banana design is now at the center of a lawsuit filed by The Velvet Underground (with Cale and Reed as the general partners).  In the complaint, The Velvet Underground accuses The Andy Warhol Foundation for the Visual Arts, Inc. of infringing the banana design's trademark:

The Warhol Foundation has sought to justify its unlawful licensing activities involving the Mark by asserting that it has a copyright interest in the Banana design, despite the incontrovertible fact that the Banana design, insofar as copyright rights are concerned, is in the public domain. The Banana design was first published in 1967, and continuously and repeatedly afterwards, without any copyright notice, and neither Andy Warhol, the Warhol Foundation, nor anyone else, has applied for registration of any copyright or deposited any sample of the work with the Copyright Office. Under the applicable copyright law-which is the Copyright Act in effect from July 1, 1909 through December 31, 1977 (the "1909 Act")-such publication without a copyright notice irrevocably placed the Banana design in the public domain, if it was not there already.

(footnotes omitted)

Warhol Foundation Makes Cozy with Tablets and Smartphones / "Release the Banana" Replies The Velvet Underground

The lawsuit was initiated after The Warhol Foundation attempted to license the banana design to a new series of iPhone and iPad cases. According to the complaint, the Warhol Foundation has asserted that The Velvet Underground has no trademark rights in the banana design and that the Warhol Foundation "may have" a copyright interest.

The Velvet Underground licenses reproductions of the banana design and has conducted such licensing for over 25 years. In support of its licensing and trademark rights, The Velvet Underground asserts:

The Banana design is a significant element of VU's ongoing licensed merchandising activity. VU'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. As a result, the symbol has become so identified with The Velvet Underground and its members as a group, and of their identity as creators and the goodwill associated with them, that members of the public, and particularly those who listen to rock music, immediately recognize the Banana design as the symbol of The Velvet Underground, and link the same to The Velvet Underground and its members, such that the Banana design has developed and now possesses secondary and distinctive meaning to purchasers of goods bearing the Banana design.

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