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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 1 of 21

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK


THE VELVET UNDERGROUND, a
Partnership, by its General Partners,
John Cale and Lou Reed,





THE ANDY WARHOL FOUNDATION FOR
THE VISUAL ARTS, INC.,




Defendant.

Plaintiff,

-against-

Civil Action No.
12 Civ. 00201 (AJN)


ECF Case











WARHOL FOUNDATION’S ANSWER,

AFFIRMATIVE DEFENSES AND COUNTERCLAIMS



Defendant The Andy Warhol Foundation for the Visual Arts, Inc. (“Defendant”), by and

through its attorneys, answers the Second Amended Complaint of Plaintiff The Velvet

Underground (“Plaintiff”) as follows:

“NATURE OF THE ACTION AND RELIEF SOUGHT”



1.

Defendant denies the allegations contained in ¶ 1 of the SAC, except admits that

Plaintiff purports to bring this action under the Lanham Act and under the common law of New

York State.

2.

Defendant admits that Count I of the SAC seeks a judicial declaration that

Defendant has no copyright rights or interest in the Warhol Banana Design. Defendant

respectfully avers that it is not obligated to plead responsively to the remaining allegations of ¶ 2

Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 2 of 21

of the SAC in light of the Court’s Order and Opinion filed September 7, 2012, which granted

Defendant’s motion to dismiss Count I of the SAC (the “Dismissal Order,” D.E. 30).

3.

Defendant denies knowledge or information sufficient to form a belief about the

truth of the allegations contained in ¶ 3 of the SAC.

4.

Defendant admits, upon information and belief, that Andy Warhol attended one or

more performances of the performing group The Velvet Underground (“VU Ensemble”) during

1965 and/or 1966; that Andy Warhol and the VU Ensemble enjoyed a collaborative artistic

relationship; and that members of the VU Ensemble frequented Andy Warhol’s studio “The

Factory.” Defendant denies knowledge or information sufficient to form a belief about the truth

of the remaining allegations contained in ¶ 4 of the SAC.

5.

Defendant denies knowledge or information sufficient to form a belief about the

truth of the allegations contained in ¶ 5 of the SAC.

6.

Defendant admits, upon information and belief, that:

(i) Andy Warhol provided artwork for the front cover of the VU Ensemble’s
album “The Velvet Underground and Nico” (the “Album”);

(ii) The artwork for the Album’s front cover was a design of a banana (the
“Warhol Banana Design”); and

(iii) Andy Warhol’s signature appeared on the Album’s front cover beneath the
Warhol Banana Design.

Defendant respectfully avers that, in light of the Dismissal Order, Defendant is not obligated to

plead responsively to those allegations of ¶ 6 that concern the presence or absence of a copyright

notice on the Album’s cover. Defendant denies knowledge or information sufficient to form a

belief about the truth of the remaining allegations contained in ¶ 6.

7.

Defendant denies knowledge or information sufficient to form a belief about the

truth of the allegations contained in ¶ 7 of the SAC.



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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 3 of 21

8.

Defendant admits that the VU Ensemble broke up as a performing group in 1972.

Defendant denies knowledge or information sufficient to form a belief about the truth about the

remaining allegations contained in ¶ 8 of the SAC.

9.

Defendant denies knowledge or information sufficient to form a belief about the

truth of the allegations contained in ¶ 9 of the SAC.

10.

Defendant denies knowledge or information sufficient to form a belief about the

truth of the allegations contained in ¶ 10 of the SAC.

11.

Defendant denies the allegations contained in the third and fourth sentences of ¶

11 of the SAC. Defendant denies knowledge or information sufficient to form a belief about the

truth of the remaining allegations contained in ¶ 11.

12.

Defendant denies knowledge or information sufficient to form a belief about the

truth of the allegations contained in ¶ 12 of the SAC.

13.

Defendant denies knowledge or information sufficient to form a belief about the

truth of the allegations contained in ¶ 13 of the SAC.

14.

Defendant admits that, prior to instituting suit against Defendant, Plaintiff

communicated its legal positions in written correspondence addressed to Defendant. Defendant

denies knowledge or information sufficient to form a belief about the truth of the remaining

allegations contained in ¶ 14 of the SAC.

15.

Defendant denies knowledge or information sufficient to form a belief about the

truth of Plaintiff’s allegations concerning the August 2011 article in the New York Times.

Defendant denies the remaining allegations contained in ¶ 15 of the SAC.



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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 4 of 21

16.

Defendant admits that the Warhol Banana Design is part of the catalog of artwork

and images that Defendant makes available for license. Defendant denies the remaining

allegations contained in ¶ 16 of the SAC.

17.

Defendant admits that, on January 25 and 26, 2012, it filed applications in the

United States Patent and Trademark Office (“PTO”) to register the Warhol Banana Design as a

trademark on the PTO’s Principal Register in connection with various goods. Defendant denies

that Plaintiff is a “trademark holder,” and denies knowledge or information sufficient to form a

belief about the truth of the remaining allegations contained in ¶ 17 of the SAC.

18.

Defendant admits that it has asserted to Plaintiff that Plaintiff does not enjoy any

enforceable trademark rights in the Warhol Banana Design. Defendant respectfully avers that, in

light of the Dismissal Order, Defendant is not obligated to plead responsively to the remaining

allegations contained in ¶ 18 of the SAC.

19.

Defendant admits that Count II of the SAC purports to state a claim against

Defendant under Section 43(a) of the Lanham Act. Defendant denies the remaining allegations

contained in ¶ 19 of the SAC.

“PARTIES”

20.

Defendant admits, on information and belief, that Plaintiff’s principal place of

business is located at 270 Madison Avenue, Suite 140, New York, New York 10016. Defendant

denies knowledge or information sufficient to form a belief about the truth of the remaining

allegations contained in ¶ 20 of the SAC.

21.

Defendant admits the allegations contained in Paragraph 21 of the SAC.







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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 5 of 21

“JURISDICTION AND VENUE”

22.

Defendant denies that the Court has subject matter jurisdiction over the cause of

action asserted in Count I of the SAC, but admits that the Court has subject matter jurisdiction

over the SAC’s remaining three causes of action.

23.

24.

Defendant admits that the Court may assert personal jurisdiction over Defendant.

Defendant admits that venue is proper in this Judicial District.

“COUNT I: DECLARATORY JUDGMENT”

25.

Defendant repeats and incorporates by reference its answers to ¶¶ 1 – 24 of the

SAC.

26.

Defendant respectfully avers that, in light of the Dismissal Order, Defendant is

not obligated to plead responsively to the allegations contained in ¶¶ 25 – 44 of the SAC.

[¶¶ 27 – 44 are intentionally left blank]

“COUNT II: FALSE DESIGNATIONS OF ORIGIN”

45.

Defendant repeats and incorporates by reference its answers to ¶¶ 1 – 24 of the

SAC.

46.

Defendant denies knowledge or information sufficient to form a belief about the

truth of Plaintiff’s allegation that Plaintiff has “for at least 25 years . . . licensed the Mark’s use

on goods….” Defendant denies the remaining allegations contained in ¶ 46 of the SAC.

47.

Defendant admits that it has extended licenses to third parties to use the Warhol

Banana Design. Defendant denies the remaining allegations contained in ¶ 47 of the SAC.

48.

49.

50.



Defendant denies the allegations contained in ¶ 48 of the SAC.

Defendant denies the allegations contained in ¶ 49 of the SAC.

Defendant denies the allegations contained in ¶ 50 of the SAC.

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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 6 of 21

51.

52.

53.

54.

55.

Defendant denies the allegations contained in ¶ 51 of the SAC.

Defendant denies the allegations contained in ¶ 52 of the SAC.

Defendant denies the allegations contained in ¶ 53 of the SAC.

Defendant denies the allegations contained in ¶ 54 of the SAC.

¶ 55 of the SAC purports to reserve various procedural “rights” of Plaintiff.

Defendant respectfully avers that it is not obligated to respond.

“COUNT III: UNFAIR COMPETITION UNDER NEW YORK COMMON LAW”

56.

Defendant repeats and incorporates by reference its answers to ¶¶ 1 – 24 and 45 -

55 of the SAC.

57.

58.

Defendant denies the allegations contained in ¶ 57 of the SAC.

Defendant admits Plaintiff’s allegation that the Warhol Foundation owns all right,

title and interest in many designs by Andy Warhol. Defendant denies knowledge or information

sufficient to form a belief about the truth of Plaintiff’s allegation about the “fair market value” of

the “many hundreds and possibly thousands of original designs by Andy Warhol.” Defendant

denies the remaining allegations contained in ¶ 58 of the SAC.

59.

Defendant admits Plaintiff’s allegation that, “since in or about 2005, the Warhol

Foundation has actively licensed” numerous designs “for use on a wide array of goods.”

Defendant denies knowledge or information sufficient to form a belief about the truth of the

remaining allegations contained in ¶ 59 of the SAC.

60.

61.

62.

63.

Defendant denies the allegations contained in ¶ 60 of the SAC.

Defendant denies the allegations contained in ¶ 61 of the SAC.

Defendant denies the allegations contained in ¶ 62 of the SAC.

Defendant denies the allegations contained in ¶ 63 of the SAC.



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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 7 of 21

64.

65.

66.

67.

Defendant denies the allegations contained in ¶ 64 of the SAC.

Defendant denies the allegations contained in ¶ 65 of the SAC.

Defendant denies the allegations contained in ¶ 66 of the SAC.

¶ 67 of the SAC purports to reserve various procedural “rights” of Plaintiff.

Defendant respectfully avers that it is not obligated to respond.

“COUNT IV: MISAPPROPRIATION UNDER NEW YORK COMMON LAW”

68.

Defendant repeats and incorporates by reference its answers to ¶¶ 1 – 24, 45 – 55,

and 56 - 67 of the SAC.

69.

70.

71.

72.

73.

74.

Defendant denies the allegations contained in ¶ 69 of the SAC.

Defendant denies the allegations contained in ¶ 70 of the SAC.

Defendant denies the allegations contained in ¶ 71 of the SAC.

Defendant denies the allegations contained in ¶ 72 of the SAC.

Defendant denies the allegations contained in ¶ 73 of the SAC.

¶ 74 of the SAC purports to reserve various procedural “rights” of Plaintiff.

Defendant respectfully avers that it is not obligated to respond.

75.

Defendant denies the allegations contained in ¶ 75 of the SAC.

“EXEMPLARY DAMAGES”















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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 8 of 21

AFFIRMATIVE DEFENSES

In addition to the admissions and denials stated above, Defendant asserts the following

affirmative defenses to liability. These defenses are pled in the alternative and do not constitute

an admission of liability by Defendant.

First Affirmative Defense

76.

Count IV of the SAC fails to state a claim for which relief can be granted.

Second Affirmative Defense

77.

Plaintiff never made a bona fide source-indicating trademark use of the Warhol

Banana Design in connection with some or all of the goods/services for which Plaintiff claims

trademark rights.

Third Affirmative Defense

78.

The Warhol Banana Design never acquired a secondary meaning as a designation

of origin for Plaintiff’s business in connection with some or all of the goods/services for which

Plaintiff claims trademark rights.

Fourth Affirmative Defense

79.

Even if Plaintiff at some point in the past developed trademark rights in the

Warhol Banana Design for certain goods/services, Plaintiff thereafter abandoned those rights by

discontinuing its use of the Warhol Banana Design as a trademark with the intention not to

resume such use.







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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 9 of 21

Fifth Affirmative Defense

80.

In licensing-out the right to use the Warhol Banana Design, Plaintiff authorized

and/or condoned its licensees’ use of Andy Warhol’s name and/or signature in close proximity to

the Warhol Banana Design, even though the goods in do not originate from and are not affiliated

with Defendant. Plaintiff’s claims are therefore barred by the doctrines of unclean hands and/or

illegal trademark use.

Sixth Affirmative Defense

81.

As between the parties, Defendant enjoys priority of trademark use of the Warhol

Banana Design via-a-via Plaintiff.

Seventh Affirmative Defense

82.

Plaintiff has acquiesced to Defendant’s use of the Warhol Banana Design as a

trademark in connection with some or all of the goods/services for which Plaintiff claims

trademark rights.

Eighth Affirmative Defense

83.

Plaintiff’s claims are barred by the doctrines of laches and equitable estoppel.

Ninth Affirmative Defense

84.

Plaintiff has suffered no recoverable damages and/or has failed to mitigate its

damages.









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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 10 of 21

COUNTERCLAIMS

Defendant and Counterclaim-Plaintiff The Andy Warhol Foundation for the Visual Arts,

Inc. (“Warhol Foundation”), by its undersigned attorneys, incorporating by reference all of the

allegations set forth above, for its counterclaims against Plaintiff and Counterclaim-Defendant

The Velvet Underground (“VU Partnership”) alleges:

THE PARTIES

1.

The Warhol Foundation is a New York not-for-profit corporation and maintains

its principal place of business at 65 Bleecker Street, New York, New York 10012.

2.

Upon information and belief, the VU Partnership is a New York partnership and

maintains its principal place of business at the offices of Christopher R. Whent, Esq., 270

Madison Avenue, New York, New York 10016.

SUBJECT MATTER JURISDICTION

3.

The Court has jurisdiction over the subject matter of the Warhol Foundation’s

counterclaims pursuant to 15 U.S.C. §§ 1119 and 1121, and 28 U.S.C. §§ 1331, 1338 and 1367.

A.

Andy Warhol and the VU Ensemble

BACKGROUND FACTS

4.

The artist Andy Warhol (1928 – 1987) is one of the most influential figures in

twentieth century art and culture.

5.

Upon information and belief, in or about December 1965, Andy Warhol attended

one or more performances of a fledgling rock band that called itself “The Velvet Underground”

(the “VU Ensemble”).

6.

At the time of his first encounter with the VU Ensemble, Andy Warhol was

already widely known as a leading contemporary artist.



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7.

Upon information and belief, during 1965 and 1966, John Cale, Lou Reed and the

other members of the VU Ensemble sought out, received and benefited professionally and

personally from their developing reputation as being Andy Warhol’s recent project and protégés.

8.

Upon information and belief, in or about 1966 the VU Ensemble wanted to

release a record album (its first).

9.

Upon information and belief, Andy Warhol suggested, and the VU Ensemble

agreed, that the VU Ensemble include the German singer, lyricist and composer Christa Päaffgen

– also known as “Nico” – as a singer on the group’s first record album.

10.

The VU Ensemble released its debut album, “The Velvet Underground and Nico”

(the “Album”), in March 1967.

11.

Andy Warhol was the Album’s producer.

12.

Andy Warhol provided artwork for the Album’s front cover. The artwork

featured the design of a banana (the “Warhol Banana Design”).

13.

Upon information and belief, Andy Warhol had created the Warhol Banana

Design in or about 1966 and used the design in making approximately 300 screen prints in

laminated plastic.

14.

Andy Warhol’s signature appeared on the Album’s front cover, directly beneath

the Warhol Banana Design.

The Warhol Foundation’s Mission, Licensing Program and Trademarks

B.


15.

16.

Andy Warhol died unexpectedly at the age of 58 on February 22, 1987.

The Warhol Foundation was established shortly after Andy Warhol’s death to

implement provisions contained in Andy Warhol’s Last Will and Testament directing that much

of his estate be used to create a foundation that dedicated to the advancement of the visual arts.



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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 12 of 21

17.

The Warhol Foundation’s mission is to foster innovative artistic expression and

the creative process by encouraging and supporting through grants cultural organizations that,

directly or indirectly, support visual artists and their work.

18.

The Warhol Foundation funds its activities through an endowment and through

revenues generated by a licensing program.

19.

The Warhol Foundation’s licensable intellectual property in the United States

includes various common law and registered trademarks consisting of Andy Warhol’s name and

signature – among others, the marks shown on the following Principal Register registrations:

Reg. Nos. 3,497,321; 3,403,036; and 3,588,888.

20.

The trademark registrations identified above in ¶ 19 are valid, subsisting and are

in full force and effect.

21.

The Warhol Foundation’s licensable intellectual property in the United States also

includes the Warhol Banana Design, as well as numerous other registered and common law

trademarks comprised of various designs, symbols and devices.

22.

The Warhol Foundation exercises control over the nature and quality of all

licensed goods/services that bear Andy Warhol’s name and signature, the Warhol Banana

Design, and/or the Warhol Foundation’s other registered and common law trademarks

(collectively, the “Warhol Foundation Marks”).

23.

All use of the Warhol Foundation Marks by the Warhol Foundation’s licensees

inures to the benefit of the Warhol Foundation.

24.

As a result of advertising, sales and promotional activities by the Warhol

Foundation and/or its licensees, and as a result of Andy Warhol’s reputation as an internationally

acclaimed artist and cultural figure, Andy Warhol’s name and signature and the other Warhol



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Foundation Marks have achieved a secondary meaning connoting the Warhol Foundation as the

source of licensed and authorized goods bearing such marks.

FIRST CAUSE OF ACTION

Declaratory Judgment of Trademark Invalidity by Reason

of the VU Partnership’s Unclean Hands and Illegal Trademark Use



25.

The Warhol Foundation repeats and re-alleges the allegations of ¶¶ 1 - 24 as if

fully set forth herein.

26.

This is a claim for declaratory relief arising under the Declaratory Judgment Act,

28 U.S.C. § 2201.

27.

Upon information and belief, since approximately 1993, the VU Partnership has

engaged in a licensing program through which it has authorized third parties to use various

names and images in return for royalty payments.

28.

In connection therewith, the VU Partnership has granted third parties the right to

use the Warhol Banana Design on and in connection with a wide array of goods that do not

originate from and are not associated with the Warhol Foundation.

29.

Upon information and belief, in licensing-out the right to use the Warhol Banana

Design, the VU Partnership has authorized and/or condoned its licensees’ use of Andy Warhol’s

name and/or signature in close proximity to the Warhol Banana Design, even though the goods

in do not originate from and are not affiliated with the Warhol Foundation.

30.

The VU Partnership’s use of Andy Warhol’s name and/or signature on or in

connection any good or service (apart from a CD or other recording of the Album) is deceptive

and unlawful. Such use 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.



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31.

The VU Partnership has indelibly tainted its use of the Warhol Banana Design by

conjoining the Warhol Banana Design with Andy Warhol’s name and signature on

goods/services that do not originate from the Warhol Foundation.

32.

The foregoing misconduct by the VU Partnership constitutes unclean hands and

illegal trademark use and precludes the VU Partnership from maintaining rights in the Warhol

Banana Design as a trademark.

33.

The VU Partnership has instituted suit lawsuit against the Warhol Foundation in

the United States District Court for the Southern District of New York, claiming that the Warhol

Foundation’s use of the Warhol Banana Design through the Warhol Foundation’s licensees

infringes the VU Partnership’s purported trademark rights in the Warhol Banana Design.

34.

By reason of the foregoing, an actual case and justiciable controversy within the

meaning of 28 U.S.C. § 2201 exists between the Warhol Foundation and the VU Partnership

over whether the VU Partnership may maintain trademark rights in the Warhol Banana Design.

SECOND CAUSE OF ACTION



Declaratory Judgment with Respect to the Warhol

Foundation’s Priority of Trademark Use vis-à-vis the VU Partnership



35.

The Warhol Foundation repeats and re-alleges the allegations of ¶¶ 1- 34 as if

fully set forth herein.

36.

This is a claim for declaratory relief arising under the Declaratory Judgment Act,

28 U.S.C. § 2201.

37.

Acting through its licensees, the Warhol Foundation has used the Warhol Banana

Design as a trademark on bags, tote bags, and fashion bags since at least as early as September

25, 2005; on watches since at least as early as October 24, 2005; and on men’s and women’s

clothing since at least as early as April 1, 2006.



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38.

On January 25 and 26, 2012, the Warhol Foundation filed applications with the

United States Patent and Trademark Office (“PTO”) to register the Warhol Banana Design as a

trademark under Section 1(a) of the Lanham Trademark Act (“Lanham Act”) for the goods

specified in ¶ 37 based on the dates of first use identified in that paragraph.

39.

The Warhol Foundation’s registration application filed January 26, 2012 also

seeks to register the Warhol Banana Design as a trademark for various additional goods under

Section 1(b) of the Lanham Act based on the Warhol Foundation’s bona fide intention to use the

mark for these goods in commerce.

40.

In the instant lawsuit, the VU Partnership contends that it began to use the Warhol

Banana Design as a trademark for various goods/services on dates that precede the Warhol

Foundation’s claimed date of first use of the Warhol Banana Design as a trademark (viz.,

September 25, 2005).

41.

However, as between the parties, it is the Warhol Foundation that enjoys priority

of trademark use in the Warhol Banana Design because, upon information and belief, the VU

Partnership never made a bona fide source-indicating trademark use of the Warhol Banana

Design and/or never acquired a secondary meaning in the Warhol Banana Design as a

designation of origin.

42.

The Warhol Foundation enjoys priority of trademark use in the Warhol Banana

Design for the additional, independently sufficient reason that the VU Partnership’s acts of

unclean hands and illegal trademark use hereinabove alleged (supra., ¶¶ 28 – 32) preclude the

VU Partnership from maintaining enforceable trademark rights in the Warhol Banana Design as

against the Warhol Foundation.



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43.

By reason of the foregoing, an actual case and justiciable controversy within the

meaning of 28 U.S.C. § 2201 exists between the Warhol Foundation and the VU Partnership

over which of the parties to this litigation – the Warhol Foundation or the VU Partnership –

enjoys priority of trademark use in the Warhol Banana Design.

COUNT III

Trademark Infringement and False

Designations of Origin: Andy Warhol Name and Signature



44.

The Warhol Foundation repeats and re-alleges the allegations of ¶¶ 1 - 43 as if

fully set forth herein.

45.

This is a claim for injunctive and monetary relief arising under the Lanham

Trademark Act, 15 U.S.C. §§ 1051 et. seq.

46.

The VU Partnership’s use of the Warhol Foundation’s registered trademarks

consisting of Andy Warhol’s name and/or signature in connection with advertising, promoting,

distributing, selling and offering to sell goods/services that do not originate from the Warhol

Foundation is likely to cause confusion, mistake and deception among consumers, in violation of

15 U.S.C. § 1114(a).

47.

The VU Partnership’s use of Andy Warhol’s name and/or signature in connection

with advertising, distributing, selling and offering to sell goods/services that do not originate

from the Warhol Foundation constitutes the use in commerce of false designations of origin, and

false or misleading descriptions of fact, in violation of 15 U.S.C. § 1125(a).

48.

The Warhol Foundation has no adequate remedy at law.







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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 17 of 21

FOURTH CAUSE OF ACTION

False Designations of Origin: The Warhol Banana Design

49.

The Warhol Foundation repeats and re-alleges the allegations of ¶¶ 1- 48 as if

fully set forth herein.

50.

This is a claim for injunctive and monetary relief arising under the Lanham

Trademark Act, 15 U.S.C. U.S.C. §§ 1051 et. seq.

51.

The VU Partnership’s use of the Warhol Banana Design as a trademark in

connection with advertising, distributing, selling and offering to sell goods/services that do not

originate from the Warhol Foundation constitutes the use in commerce of false designations of

origin, and false or misleading descriptions of fact, in violation of 15 U.S.C. § 1125(a).

52.

The Warhol Foundation has no adequate remedy at law.

FIFTH CAUSE OF ACTION

Unjust Enrichment

53.

The Warhol Foundation repeats and re-alleges the allegations of ¶¶ 1 - 52 as if

fully set forth herein.

54.

This is a claim for damages arising under the common law of the State of New

York.

55.

The foregoing acts of the VU Partnership constitute unjust enrichment under the

common law of the State of New York.

SIXTH CAUSE OF ACTION

Unfair Competition

56.

The Warhol Foundation repeats and re-alleges the allegations of ¶¶ 1 – 55 as if set

forth fully herein.



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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 18 of 21

57.

This is a claim for injunctive and monetary relief arising under the common law

of the State of New York.

58.

The foregoing acts of the VU Partnership constitute unfair competition under the

common law of the State of New York.



PRAYER FOR RELIEF

WHEREFORE, the Warhol Foundation demands judgment against the VU

Partnership as follows:

1.

Declaring that the VU Partnership’s use and/or authorization of others to use the

Andy Warhol name and signature in conjunction with the Warhol Banana Design for

goods/services that do not originate from the Warhol Foundation constitutes unclean hands and

illegal trademark use – thereby precluding the VU Partnership from maintaining enforceable

trademark rights in the Warhol Banana Design.

2.

Declaring that, as between the parties, the Warhol Foundation enjoys priority of

trademark use in the Warhol Banana Design.

3.

Enjoining the VU Partnership, its licensees, successors, officers, partners, agents,

attorneys, employees, distributors, vendors, sales representatives and account managers, and

anyone acting in active concert or participation with any of them, from:

A.

B.

Using the Andy Warhol name and/or signature on or in connection with
any goods or services that do not originate from the Warhol Foundation.

Using the Warhol Banana Design on or in connection with any goods or
services that do not originate from the Warhol Foundation.

C.

Otherwise infringing any trademark rights of the Warhol Foundation.

D.

Otherwise competing unfairly with the Warhol Foundation.



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4.

Ordering the VU Partnership to engage in corrective advertising with all

distributors, vendors, sales representatives and account managers that have received products,

labels, packaging, wrappers, signs, prints, banners, posters, brochures or other advertising

materials comprised of or bearing the Warhol Banana Design, to mitigate the damage done to the

Warhol Foundation’s reputation and the harm done to the goodwill associated with the Warhol

Foundation Marks stemming from the VU Partnership’s unlawful infringement and unfair

competition.

5.

Awarding the Warhol Foundation compensation for all damages, injuries and

harm caused by the VU Partnership’s unlawful conduct.

6.

Ordering full restitution and/or disgorgement of all profits and benefits that may

have been obtained by the VU Partnership as a result of its wrongful conduct.

7.

Declaring that the VU Partnership’s infringement of the Warhol Foundation’s

trademark rights was knowing, intentional and willful, and awarding the Warhol Foundation

treble damages resulting from the VU Partnership’s willful and intentional misconduct.

8.

9.

Awarding the Warhol Foundation punitive and exemplary damages.

Directing that the VU Partnership pay the costs of this action and reimburse the

Warhol Foundation for its attorney’s fees.

10.

Awarding the Warhol Foundation such other relief as the Court deems necessary,

just and proper.











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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 20 of 21

JURY DEMAND

The Warhol Foundation hereby makes demand for a trial by jury on all issues triable to a

jury.



Dated: September 14, 2012











Respectfully submitted,

COLLEN IP
Attorneys for Defendant and Counterclaim-Plaintiff,
The Andy Warhol Foundation for the Visual Arts, Inc.


By:











Jess M. Collen (JC 2875) – [email protected]
Joshua Paul (JP 4079) – [email protected]
Lisa A. McAndrews – [email protected]
The Holyoke-Manhattan Building
80 South Highland Avenue
Ossining, New York 10158
Tel. (914) 941-5668





To:

Clifford James, Esq. – [email protected]
260 Madison Avenue, 17th Floor
New York, New York 10016-2401
Tel. (212) 532-6333

Christopher R. Whent, Esq. - [email protected]
270 Madison Avenue, Suite 1410
New York, New York 10016-0601
Tel. (212) 545-9552


Attorneys for Plaintiff and Counterclaim-Defendant
The Velvet Underground






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Case 1:12-cv-00201-AJN Document 33 Filed 09/14/12 Page 21 of 21

CERTIFICATE OF SERVICE




I, JOSHUA PAUL, being a member of the Bar of this Court, certify that, on September

14, 2012, I served a true and correct copy of the within “WARHOL FOUNDATION’S

ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS” by electronic mean (e-

mail) to the following attorneys of record for Plaintiff The Velvet Underground:

Clifford James, Esq., 260 Madison Avenue, 17th Floor, New York, New
York 10016-2401 (email address: [email protected])

Christopher R. Whent, Esq., 270 Madison Avenue, Suite 1410, New York,
New York 10016-0601 (email address: [email protected])



Dated: Ossining, New York

September 14, 2012


_______________________________

JOSHUA PAUL (JP4079)





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