The Andy Warhol Foundation has gone on the offensive against the Velvet Underground in the ongoing legal saga over the banana design that graces the rock group's 1967 debut album.
In court papers filed in U.S. District Court in New York last week, the Andy Warhol Foundation for the Visual Arts, which is the defendant in the case, claims that it is the rightful heir to the banana graphic, which was designed by Warhol, and that the Velvet Underground has been making unauthorized use of the graphic.
In its filing, the New York-based foundation claims that it filed to register the banana design in January 2012 and that it had been using the banana graphic as a trademark for various products since 2005.
While the Velvet Underground says that it was using the graphic as a trademark for different goods and services before then, the Warhol Foundation asserts that it "enjoys priority of trademark use in the Warhol Banana Design" because the group "never made a bona-fide source-indicating trademark use" of the graphic.
Also, the foundation argues, it owns the rights to Warhol's name and signature — which are included in the banana design, and have "achieved a secondary meaning connoting the Warhol Foundation as the source of licensed and authorized goods bearing such marks."
Attorneys for the Velvet Underground and the Warhol Foundation have not yet responded to TheWrap's request for comment.
The foundation goes on to argue that the Velvet Underground's use of the banana graphic in licensing deals "constitutes unclean hands and illegal trademark use." The group's use of Warhol's name and signature, the suit further alleges, "is deceptive and unlawful," and "is likely to confuse consumers into believing that the Warhol Foundation or other authorized representative of Andy Warhol has sponsored, approved or authorized the good or service in question."
The Velvet Underground initially filed suit in January 2011, complaining that the foundation had allowed the banana image to be used for a series of iPhone and iPad cases. According to the band's original complaint, the use of the image creates the false impression that the group endorses those products.
"[T]he symbol has become so identified with the Velvet Underground and its members as a group … 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," the complaint reads.
Last month, U.S. District Court Judge Alison Nathan dismissed the copyright claims in the group's complaint, which held that the Foundation had no copyright claim to the design, since the Warhol Foundation had entered a covenant not to sue the group for copyright infringement over the image.
The group's attorney, Clifford James, told TheWrap that the Foundation's counterclaims "appear to be an effort to dress in different clothes the Warhol Foundation's copyright infringement claim that it immediately abandoned upon being sued, and characterized the counterclaims as "another meritless effort to seek to justify its persistent infringement of The Velvet Underground's rights."
"Since 1967 when 'The Velvet Underground and Nico' album was released, The Velvet Underground has properly, legally, and continuously used the Banana design as a trademark for over 25 years to identify and promote the band and its music," James said. "The Velvet Underground is confident the courts will uphold The Velvet Underground's exclusive rights to the Banana design."
Pamela Chelin contributed to this report.