Nirvana sues artist over rights to smiley face TM
The company representing grunge band Nirvana has sued graphic designer Robert Fisher to clarify who owns the rights to its iconic ‘smiley face’ logo.
The move comes amid Nirvana’s ongoing dispute with Marc Jacobs over its use of the logo and the fashion brand’s claim that Nirvana’s copyright registration for the mark is illegitimate due to Fisher’s ownership.
In its complaint filed at the US District Court for the Central District of California, on Wednesday, November 11, Nirvana argued that its late frontman Kurt Cobain created the t-shirt design in July 1991 to promote Nirvana’s “Nevermind” album, and that the band registered the copyright to it in 1993.
According to the filing, Nirvana signed a recording agreement with the David Geffen Company, now owned by UMG Recordings, which employed Robert Fisher as a graphic designer.
Nirvana has argued that any role Fisher played in the creation of the design took place within “the course and scope of his employment” by Geffen, and consequently, that any copyright interest in any such work would have been owned in the first instance by Geffen, not Fisher.
It further stated that Geffen has “acknowledged that Nirvana owns the copyright”, which includes the disputed design, and has granted Nirvana whatever rights Geffen possesses in whatever work Fisher did in creating the t-shirt and the design on the front of that t-shirt.
Furthermore, the filing pointed out that merchandise bearing that design has been the band’s most popular for years, and that the years since the design’s creation, Fisher has never claimed any interest in it.
It added that it was only in the spring of 2020 that “Fisher for the first time began to claim that he, not Nirvana, owned a copyright in that smiley face design”.
The complaint held that in August 2020, Fisher filed a copyright registration, asserting that Nirvana has been using the design for almost three decades under an “implied” licence he granted to Nirvana. Fisher has stated that he will terminate this licence effective from January 1, 2021, and that “any further exploitation by Nirvana after that date will infringe his copyright in the smiley face design”, said the filing.
In response to this assertion of ownership, Nirvana is seeking “a declaratory relief” to establish that its US copyright in the ‘smiley face’ image and t-shirt design is valid and Fisher’s copyright registration is not.
In December 2018, Nirvana sued Marc Jacobs, alongside fashion retailers, Saks and Neiman Marcus Group, accusing them of infringing the copyright of the t-shirt design.
It claimed that Marc Jacobs used a “virtually identical” logo on items of its “Bootleg Redux Grunge” clothing collection, and further alleged that the advertising for this collection makes clear references to Nirvana songs “Smells Like Teen Spirit” and “Come As You Are”.
In March 2018, Marc Jacobs asked the court to dismiss the suit, holding that Nirvana’s “egregious” complaint made claims that were “factually unsupported”.
Earlier this month, the brands collectively argued that Nirvana failed to state how or whether it obtained rights to the artwork from Cobain, and who was the creator of the other elements of the registration.
They also requested that Nirvana be sanctioned for allegedly violating deposition and disclosure rules, arguing that it had “abused the discovery process, neglected their discovery obligations and ignored the norms of discovery conduct since the moment discovery began”.
They claimed that Nirvana had withheld documents received from Fisher for months when the brands had been trying to obtain discovery to “establish the creator and owner of the t-shirt design for eight months”.
Nirvana is one of the most influential rock bands of all time, selling more than 75 million records, and was inducted into the Rock and Roll Hall of Fame in 2014.
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