Last month, the Velvet Underground sued the Andy Warhol Foundation with an artful double-step: On one hand, the band claimed that the famous image that adorns its classic 1967 album, The Velvet Underground & Nico, was in the public domain. On the other hand, the band said that the Foundation had no right to license it because it had acquired enough "secondary and distinctive meaning" to be associated with the Velvet Underground.
The band has now filed an amended complaint, which hedges on the public domain question and raises some interesting issues.
In the lawsuit, the Velvet Underground offer two reasons why the iconic banana image is in the public domain. When the album first came out, it was not published with a copyright notice. Furthermore, it's alleged that Andy Warhol based his banana cover artwork "from an element of an advertisement in the public domain." According to the plaintiff, copyright law confers no protection on works thrust into the public domain before January 1, 1978, when the law was amended.
These points could be contested. Perhaps a copyright notice will surface after all. Maybe the lack of notice on a 1967 album (before sound recordings got federal copyright protection) could be argued as an "accidental omission." And the Warhol Foundation probably at very least has a good argument that the famed artist added creative elements to whatever public domain image he used.
In an amended complaint filed last week, the Velvet Underground backtracked somewhat from its original contention that the artwork is firmly in the public domain. The band now says that "even if the Banana design has not been in the public domain at all times, the Warhol Foundation can't claim copyright on it."
This is also reflected in the amended declaration that the plaintiff is seeking from a judge: "The Warhol Foundation has no copyright rights in the Banana design," leaving out the end of the previous wording, which read "because, under applicable statutory copyright law, all such potential rights were placed in the public domain;"
But let's say the work is in the public domain, and can be freely used by anyone. Does that prevent someone from licensing it? We spoke to some IP experts about this issue, who analogized the situation to someone selling the Brooklyn Bridge. If a first party pays a second party $100 for something that the public owns, who is the fool?
Of course, the Velvet Underground is also asserting trademark claims on the work, saying that the banana design has acquired secondary meaning as a mark of the Velvet Underground, and that by licensing it, the Warhol Foundation caused "confusion as to the affiliation, approval, or sponsorship" by the band.
The band will now have to convince a judge that the foundation's use of the mark, through mere licensing (and not production) of the mark on goods like iPhone covers, is likely to cause confusion as to the source of these goods.
From those we've spoken to, that argument is going to be a hard sell -- especially since Warhol might have acquired his own secondary meaning on the mark -- and the band would have had a better case if Lou Reed and John Cale could have claimed copyright ownership themselves on the cover image. Why didn't they? That raises a final curiousity. If the image isn't in the public domain, and the band is now allowing that possibility, who owns it? The band says it's not the Warhol Foundation, so who?
Perhaps the band is being shy about making their own claim. Or here's another possibility.
According to the facts in record, MGM Records paid both the band and Warhol $3,000 to furnish the image for use on the 1967 album cover. If the record label paid the money as a work-for-hire agreement, the true "author" of the image, under the law, would be the record label. We asked Universal Music Group, the seeming successor to MGM Records, to comment, but so far, we haven't heard anything.