Lawyers cast doubt on Nirvana claims against Marc Jacobs
Lawyers have told WIPR that a lawsuit which argues that Marc Jacobs International infringed IP owned by former rock band Nirvana may not be strong enough to secure victory.
WIPR reported yesterday that Nirvana LLC, a company representing the former band, sued the fashion designer on December 28 for infringing trademarks and copyright covering the group’s ‘smiley face’ logo.
The logo, which features the letter ‘x’ in place of each eye and a tongue sticking out of the mouth, was designed by the band’s late front man Kurt Cobain in 1991.
Filed in the US District Court for the Central District of California, the claim cited a number of items within Marc Jacobs’ ‘Bootleg Redux Grunge’ clothing range, including t-shirts and socks, which bear the “virtually identical image”.
It further alleged that Marc Jacobs had engaged in a marketing campaign which referenced Nirvana, including the band’s song titles and lyrics.
But Richard LaBarge, partner at Marshall, Gerstein & Borun in Chicago, said it’s a common misperception that anything that calls to mind the trademarks or copyright-protected work of another company violates the rights of that company.
Under copyright law, Marc Jacobs could use the fair use defence, LaBarge said. He noted that while the Marc Jacobs smiley face was clearly drawn from and calls to mind the Nirvana image, Marc Jacobs has replaced the ‘x’ letters that Nirvana used for the eyes with the ‘m’ and ‘j’ initials, and added the word ‘Heaven’ above the face.
“The courts will need to decide if those differences are enough to make the ‘copying’ a permissible fair use,” he added.
Tom Williams, partner at Ulmer & Berne, also in Chicago, said that the trademark-based claims are particularly interesting.
There is little doubt that the imagery calls to mind Nirvana, and a consumer survey may show confusion over sponsorship or approval, he said, but Marc Jacobs will probably lean heavily on First Amendment defences, arguing that the designs and imagery are protected free speech.
“Courts continue to struggle with the balance between IP rights and free speech. This case serves as a good example,” he added.
LaBarge said it’s probably unlikely that anyone seeing the new Marc Jacobs shirts will think that they are Nirvana products or were made by Nirvana, but he cautioned that courts often find infringement if purchasers are likely to think that the products were licensed by the trademark owner.
“Nirvana LLC is arguing that purchasers will think the Marc Jacobs products are licensed by Nirvana, and if they can prove that, they might win on that claim,” he concluded.
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