Image: MJ

Nirvana’s strongly-worded case against Marc Jacobs can proceed, a California federal court ruled this week, shooting down the New York-based fashion brand’s attempts to have the lawsuit tossed out once and for all. In a decision on Wednesday, Judge John Kronstadt of the U.S. District Court for the Central District of California denied Marc Jacobs’ motion to dismiss the case, holding that Nirvana maintains trademark rights in the smiley graphic, and the parties’ rival wares are similar enough to give rise to a plausible finding of copyright infringement.

Judge Kronstadt sided with Nirvana on the copyright infringement front, stating that “the only discernible difference [between the two parties’ designs] is the use of ‘M J’ eyes on [Marc Jacobs’] version instead of the ‘X’ eyes used on [Nirvana’s] work,” and thereby, Jacobs’ argument to the contrary does “not preclude [Nirvana’s] ‘substantial similarity’ claim.” (Substantial similarity is the requisite standard for gauging whether two works are similar enough to give rise to a finding of copyright infringement).

The judge also stated that “it is noteworthy that [Marc Jacobs’ products] have combined [Nirvana’s] protectable artwork with other distinctive elements of the Nirvana t-shirts, including through the use of yellow lines on black background and a similar type and placement for the text above the image on the clothing.”

In terms of the trademark causes of action, the court held that Nirvana’s claims of infringement and false designation of origin “are adequately pleaded,” as the band’s LLC established that it maintains “a valid, protectable trademark in the Happy Face,’“ regardless of whether or not it maintains a registration, as a result of continuous use of the graphic “during the past 25 years.” More than that, he held that it is “plausible” that consumers might be confused as to the source of Marc Jacobs’ wares, with the likelihood of consumer confusion – aka the chance that consumers might believe that Nirvana is connection with, endorsed, or is otherwise affiliated with the Marc Jacobs wares – being the central inquiry in a trademark infringement claim.

The court notes that even though Jacobs’ counsel argued that its products include a “modification to [Nirvana’s] Happy Face,” namely thanks to the “M J” eyes, the relevant issue for a likelihood of confusion inquiry is “not whether the marks are identical,” but instead, “whether they are sufficiently similar ‘in their entirety’ to make confusion likely.” Here, the judge says that it is feasible that a jury “would find in favor of Nirvana as to whether the ‘consuming public’ would incorrectly assume ‘that all goods or services that bear the [specific smiley] logo are endorsed by or associated with Nirvana.’”

Still yet, despite Marc Jacobs’ argument that Nirvana’s trademark claims are preempted by the Copyright Act, the court disagreed, stating that the trademark claims are, in fact, “trademark claims, not disguised copyright claims.”

With that in mind, the case is set to move forward in the litigation process.

Wednesday’s order comes on the heels of the Nirvana filing suit against Marc Jacobs in December 2018, alleging that Marc Jacobs International and a couple of big-name retailers “infringed Nirvana’s copyright, misleadingly used Nirvana’s trademarks, and utilized other elements with which Nirvana is widely associated to make it appear that Nirvana has endorsed or is otherwise associated with” Marc Jacobs’ recently re-released “Bootleg Redux Grunge” collection.

 A Nirvana “Smiley Face” tee (left) & a tee from Marc Jacobs’ Grunge collection (right) A Nirvana “Smiley Face” tee (left) & a tee from Marc Jacobs’ Grunge collection (right)

According to the complaint filed by Nirvana, LLC – the legal entity formed in September 1997 by Dave Grohl, Krist Novoselic, and the Courtney Love-controlled Cobain Estate – in a California federal court on Friday, the late Kurt Cobain created Nirvana’s “Smiley Face” logo in 1991 and “Nirvana has used that copyright-protected design and logo continuously since [then] to identify its music.”

Thanks to such extensive use, the “Smiley Face” design has “come to symbolize the goodwill associated with Nirvana,” thereby giving rise not just to copyright protection for the design but to trademark rights, as well, since “a significant portion of the consuming public assumes that all goods or services that bear the logo are endorsed by or associated with Nirvana,” all of which Jacobs allegedly infringed by making and offering up“items of clothing that utilize a design and logo virtually identical to Nirvana’s [Smiley Face] image,” including t-shirts, sweatshirts, and socks.

Counsel for Jacobs responded to Nirvana’s suit in March, with a motion to dismiss, arguing that Nirvana based its entire suit on the “false premise that [it] owns a U.S. copyright registration [for] a smiley face design.” While Nirvana does, in fact, have a copyright registration that covers a design that includes the smiley face at issue (and has since 1993), Jacobs’ legal team argued that the smiley face is “merely a fraction of the full artwork covered by the registration … which includes the text and graphics on the full front and back of a t-shirt.”

More than that, Jacobs asserted that the case should be put to bed because Nirvana lacks trademark rights in the design at issue for use on clothing, as while Nirvana filed a trademark application with the U.S. Patent and Trademark Office for the Smiley Face on January 28, 2019 (a month after it filed suit against Jacobs), it has not actually used the “Smiley Face as a trademark on clothing … yet done so,” and thus, has not met the “use in commerce” requirement for trademark rights.

The lawsuit comes 25 years after Jacobs showed his first Grunge collection during his stint as creative director for Perry Ellis. Shortly after his Perry Ellis runway show, Jacobs sent samples to Nirvana frontman Kurt Cobain and wife Courtney Love, the latter of whom declared years later in an interview with WWD, “We burned it. We were punkers – we didn’t like that kind of thing,” likely referring to the huge mark ups on otherwise down-market wares.

A rep for Marc Jacobs was not immediately available for comment.

*The case is Nirvana LLC v. Marc Jacobs International, LLC, et al., 2:18-cv-10743 (C.D.Cal).