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4 November 2020TrademarksMuireann Bolger

Nirvana should lose smiley face TM, claims Marc Jacobs

Fashion designer Marc Jacobs has claimed that the company representing grunge band Nirvana should lose its “smiley face” trademark and also face sanctions for discovery infractions.

In a bid for summary judgment at the US District Court for the Central District of California, filed on Monday, November 2, Marc Jacobs argued, alongside retailers Neiman Marcus Group and Saks, that the band’s logo is not a legitimate trademark and that its copyright registration is invalid.

In December 2018, Nirvana sued the fashion brands accusing them of infringing the copyright of a t-shirt design titled ‘Happy Face’. The company alleged that the iconic t-shirt was created in 1991 by the band’s lead singer, Kurt Cobain, and the logo, which features the letter ‘x’ in place of each eye and a tongue sticking out of the mouth, was registered for copyright in 1993.

It claimed Marc Jacobs uses 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,” the band claimed.

In March 2018, Marc Jacobs asked the court to dismiss the suit, holding that Nirvana “egregious” complaint made claims that were “factually unsupported”.

On Monday, the fashion brands argued that the design was instead produced by artist Robert Fisher, who created the ‘Happy Face’ t-shirt at the request of Nirvana because it wanted “more consumer-friendly merchandise products that it could sell on tour and in retail locations”. However, it argued that Fisher was “never an employee of Nirvana” and also never signed an agreement with Nirvana so the designs were “made for hire for Nirvana”.

They said 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.

The brands argued that Nirvana “certainly did not have the authorisation to apply for a trademark registration for the ‘Happy Face’ illustration without Mr Fisher’s consent”.

Nirvana further argued that “there are innumerable ways in which the idea of a smiley face can be executed” and that the ‘Happy Face’ t-shirt “consists of several elements that were created independently, at different times, by at least two different people”.

They added that the disputed smiley design is “a mere variation of a generic symbol used ornamentally”, and is conceptually weak due to widespread use of similar designs on clothing by third parties.

“For years, the smiley face symbol, and refinements or variations of this commonly adopted and well-known form of ornamentation for goods, have been in overwhelmingly common and pervasive use in the US in connection with goods and services,” the filing stated.

On Tuesday, the brands also requested that Nivana be sanctioned for allegedly violating deposition and disclosure rules, arguing that the company 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 Robert 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”.

WIPR has approached the company representing Nirvana and Marc Jacobs for comment.

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More on this story

Copyright
3 January 2019   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.
Copyright
13 March 2019   Marc Jacobs has asked a court to dismiss a copyright infringement suit after the company representing former rock band Nirvana accused it of using a logo without authorisation.
Copyright
25 October 2021   A district judge had dismissed a lawsuit accusing Nirvana of infringing the copyright in an illustration of Dante’s ‘Upper Hell’, after determining that the appropriate forum to litigate the copyright complaint brought by a British individual, is the UK.