Back in January, we blogged that the Velvet Underground ("VU"), a business entity formed by the rock group "The Velvet Underground," sued the Andy Warhol Foundation for the Visual Arts, Inc. (the "Warhol Foundation") for licensing Warhol's iconic banana image (the "Banana Design") that he had created for the cover of the band's signature album, The Velvet Underground & Nico. As part of the relief requested, VU asked the Court to declare that the Warhol Foundation has no copyright in the Banana Design.
On Friday, Judge Alison Nathan threw out VU's request because it was not ripe for adjudication. It turns out that after VU filed suit, the Warhol Foundation signed a covenant not to sue VU or related entities for copyright infringement of the Banana Design for any past, current or future conduct. In other words, whether or not the Warhol Foundation had a copyright in the Banana Design, it promised that it would not challenge VU over the rights. As a result, Judge Nathan determined that whether the Warhol Foundation had a copyright in the Banana Design presented no live controversy for her to decide and sliced the issue from the case. The core trademark claims relating to the Banana Design's secondary meaning as VU's trademark remain pending.
This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
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