Marc Jacobs, “Smiley Face” artist Robert Fisher and the corporate entity for the iconic grunge rock band Nirvana appear to have come to an agreement in their long-running dispute over who created and maintains the valid copyright for the “Smiley Face” design that Nirvana has used on various merch since 1991. On Tuesday, the LVMH-owned fashion brand, Fisher, and the surviving members of the legendary Seattle rock group filed a joint report detailing the status of their settlement negotiations with the U.S. District Court for the Western District of California.
According to the July 9 joint filing, Marc Jacobs, Fisher, and Nirvana LLC participated in a settlement conference last month and subsequently agreed to mediator proposals submitted by a magistrate judge. Over the next three weeks, the parties say that they will “fully document their agreement,” which they are presently in the process of drafting and executing. After that, they have requested that the court push a previously scheduled post-mediation conference until August, at which point they believe that the court will be able to dismiss the case in its entirety.
Barring any unforeseen roadblocks, the parties’ settlement will serve to close the door on the six-year-old litigation between Marc Jacobs and Nirvana, and later, Fisher, as well.
While it is not a finalized agreement at this point and details remain undisclosed, the tentative settlement stands to bring an end to a contentious lawsuit that saw plenty of friction and twists over the last several years. The case got its start in late 2018 when Nirvana’s corporate entity targeted Marc Jacobs International on the heels of the brand releasing a collection of “items of clothing that utilize a design and logo virtually identical to Nirvana’s [Smiley Face] image,” including t-shirts, sweatshirts, and socks. ”According to Nirvana’s complaint, Marc Jacobs’ “Bootleg Redux Grunge” collection “infringed [the band’s] copyright, misleadingly used [its] 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’ “Bootleg Redux Grunge” collection.
More than merely a smiley face design, Nirvana, LLC argued that it has used the copyright-protected design and logo “continuously” since Cobain created it in 1991 “to identify its music.” Moreover, the group said that it has “licensed [the] copyrighted logo on literally dozens of different t-shirts, shirts, hats, hoodies, bags, backpacks, glasses, wallets, and other items of merchandise, many of which have sold extensively for decades.”
Fisher came into the fray in 2018 when he sought to join the Marc Jacobs case as a plaintiff on the basis that he created – and thus, maintained a valid copyright in – Nirvana’s famed “Smiley Face” design. Fisher claimed that despite the widely accepted belief that Cobain created the 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. As such, Fisher argued that he “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 a 2020 filing (after Nirvana waged a separate suit against him), Fisher argued that his authorship was 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. As such, Fisher said at the time that he is “entitled to intervene as of right or, alternatively, permissive intervention is appropriate.” The two cases were consolidated in December 2021, according to court records.
THE BIGGER PICTURE: The fight over the Nirvana smiley face is not limited to the parties’ court battle. Amid the litigation, Marc Jacobs upped the ante when it sought to block Nirvana from registering a smiley face design for use on an array of apparel items and accessories with the U.S Patent and Trademark Office. In the notice of opposition that it lodged with the Trademark Trial and Appeal Board in September 2020, Marc Jacobs argued that Nirvana’s application for registration should be tossed out because the smiley face design “fails to function as a mark; lacks inherent or acquired distinctiveness; is a generic, universal symbol; [and] is merely ornamental and has not been used by [Nirvana] as a trademark.”
“Notwithstanding any non-distinctive alterations of the universal smiley face symbol, the primary significance of [Nirvana’s mark] remains the original common expression of a smiley face design used to convey an informational message,” per Jacobs, and therefore, it “is incapable of any source identifying function.”
At the same time, Jacobs asserted that it “has utilized smiley face designs ornamentally in connection with goods identical and/or related to [the various] goods covered by [Nirvana’s] application” (i.e., garments and accessories) “and has an interest in continuing to do so in the future.” Against that background, Jacobs claimed that it would be damaged if Nirvana is able to register its smiley face as a trademark for use on an array of clothing, accessories, and footwear, and presumably, take action against others that use “confusingly similar” versions on their own wares.
While the parties’ court battle may be winding down, the equally-important opposition may soon resume proceedings after being suspended by the Trademark Trial and Appeal Board back in January 2021 pending the outcome of the litigation.
The case is Nirvana LLC v. Marc Jacobs International, LLC, et al., 2:18-cv-10743 (C.D.Cal).
Share
