Image: Marc Jacobs

The lawsuit that Nirvana LLC filed against Marc Jacobs in December 2018 may have a new party in the mix in the not too distant future. In a filing earlier this month, Robert Fisher says that he has a right to join in the case as a plaintiff since he was the one who created the x-eyed smiley face design at the heart of the copyright and trademark lawsuit that the band’s corporate entity filed against the LVMH Moët Hennessy Louis Vuitton-owned fashion brand after it allegedly co-opted the legally-protected design for its rebooted “Grunge” collection. 

According to the motion and notice of interested parties filed with the U.S. District Court for the Central District of California on September 13, counsel for Robert Fisher claims that the established art director “may have a pecuniary interest in the outcome of this case” given that he “is the author and owner of the Happy Face illustration and t-shirt design” at issue in the case. In the same filing, Fisher argues that this is a particularly relevant fact given that both Nirvana LLC and Marc Jacobs “assert various copyright and trademark claims and defenses with respect to the Happy Face illustration and t-shirt design” in the almost-2-years-running legal battle. As such, Fisher says that he is “entitled to intervene as of right or, alternatively, permissive intervention is appropriate.”  

In most cases, a lawsuit involves the plaintiff (i.e., the party – or parties – who file the suit) and the defendants, who are the ones being sued (and not uncommonly, making counterclaims of their own). But sometimes, such as in the case at hand, third-parties have reasons for wanting to join the case, and assuming that they can essentially prove that they have “a substantial interest in the property or transaction at issue in the lawsuit” and their lack of involvement “may as a practical matter impair or impede [their] ability to protect [that] interest,” they may be permitted to do so.

Here, Fisher says that he has such an interest, as despite the widely-accepted belief that the late Nirvana frontman Kurt Cobain created the smiley face design, he actually came up with it in 1991 when he was working on other projects for Nirvana – including the cover of the band’s 1991 album, Nevermind – during his tenure as an Art Director at Geffen Records. (Interestingly, Fisher claims that he actually conceived of and created the logo and the corresponding t-shirt design when he was off the clock, so to speak, from his day job at Geffen).

The now-iconic smiley face would initially appear on “casting call” flyers that sought to entice Nirvana fans – between ages 18 and 25, dressed in apparel without any “name brands or logos” – to appear in the band’s “Smells Like Teen Spirit” music video, which was filmed at GMT Studios in Culver City in August 1991. It would then be printed on the band’s tour t-shirts, and its use proliferated significantly from there. It would ultimately go on to adorn everything from t-shirts and hoodies to patches and keychains more than two decades after the band played its final show. 

Authorship and Ownership

As the Los Angeles Times reported this week, while Fisher says that his “first priority is that he be credited as creator, his larger argument is that since [his creation of the logo and t-shirt design] was not done as part of his job at Geffen, and he was not employed by the band or its managers, he is the rightful owner of the copyright.” In other words, Fisher argues that he, alone, is the copyright holder, not Nirvana and not Geffen, the latter of which (like virtually all creative companies) almost certainly requires its employees to sign over the rights in any works created as part of their employment, which is why his claim that he created the designs when he was off the clock is particularly significant.

“Since I drew it, I want to be known as the guy that drew it. It’s as simple as that,” Fisher, 58, told the Times. “I don’t think it’s fair that they try and take out a copyright and say Kurt did it.” While Fisher’s lawyer Inge De Bruyn characterizes both Nirvana LLC’s and Marc Jacobs’ use of the smiley face design as “two corporate structures making millions off a design that neither one of them created or paid for,” counsel for Nirvana LLC has since denied Fisher’s ownership claim, saying that it will “vigorously” challenge it. 

To date, Marc Jacobs has focused on calling into question the authorship and ownership of the design. In its counterclaim for declaratory judgment back in November 2019, counsel for the New York-based brand argued that Nirvana’s suit sets out a claim of infringement of Nirvana LLC’s federal registration for the smiley face design, which was “allegedly created by Kurt Cobain in 1991 that is now purportedly owned by Nirvana as a result of multiple transfers in writing and by operation of law.” However, that “allegation finds no support in the sworn testimony of David Grohl and Krist Novoselic, the two surviving members of the band Nirvana, who could not identify the creator of the disputed work in sworn testimony.”

Moreover, Jacobs’ counsel asserted that there is an “apparent absence of any living person with first-hand knowledge of the creation of the allegedly copyrighted work in question.” That – “coupled with numerous other deficiencies in the [smiley face copyright] registration” – is problematic, per Jacobs, given that Nirvana’s copyright claim is premised on the validity of that registration. (Jacobs also attempted to poke holes at Nirvana LLC’s copyright infringement claim by noting that the band’s entity “does not allege that the Disputed T-Shirt Design, or any element thereof, is original,” which is a central prerequisite to copyright protection. Instead, the brand claims that the design is “composed of familiar symbols or designs and/or words and short phrases such as names, titles, and slogans, and thus, are not subject to copyright protection.”).

The court has set a hearing for March 8, 2021 to address Fisher’s attempt to intervene, with the Times noting that “Fisher says he has no intention of seeking payment for 29 years of past use of the smiley by Nirvana, but may seek compensation going forward,” which could very well give rise to a separate (and even uglier) legal squabble.

In the meantime, the existing parties are moving towards trial after the court previously shot down Marc Jacobs’ attempts to have the lawsuit tossed out of court on the basis that Nirvana does, in fact, maintain trademark rights in the smiley graphic, and the parties’ rival wares are similar enough to give rise to a plausible finding of copyright infringement.

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