The Velvet Underground (“VU”), a 60s rock group, recently sued The Andy Warhol Foundation for trademark infringement. VU formed the band in 1965, and according to the complaint, Andy Warhol attended performances by VU and collaborated with the band. In 1966, Andy Warhol was paid to illustrate VU’s record cover, consisting of a banana design. The album was published without any copyright symbol or attribution of copyright ownership relating to the banana design. VU alleges that the banana design became a symbol of the band, and was used on multiple CD and DVD recordings. In April 2011, the Andy Warhol Foundation allegedly agreed to license a series of iPhone and iPad cases, one of which contained the banana from the 1966 VU album. VU is seeking a declaratory judgment that there is no copyright in the banana design (and instead that the banana design has acquired secondary meaning and was VU’s trademark). Pursuant to the 1909 Copyright Act, VU asserts that Andy Warhol failed to affix copyright notice on the album to obtain statutory copyright rights (as was then a requirement), and as such, the work is in the public domain. VU is also asserting that the Foundation’s use constitutes a false designation of origin and unfair competition.
TIP: Even though a work is in the public domain from a copyright perspective, advertisers should be aware that the work may be claimed as a trademark by a third party. Also, advertisers should remember that copyright notice is no longer a prerequisite to protection.