By: Bethanie Ramsey
On December 28, 2018, Nirvana, LLC[1](hereinafter “Nirvana”) filed a copyright and trademark claim against Marc Jacobs International (hereinafter “Jacobs”).[2] Nirvana alleges that Jacobs used a smiley face on pieces of his Bootleg Redux Grunge collection that was “virtually identical” to the trademarked smiley face logo used on Nirvana merchandise.[3]
In 1991, Kurt Cobain, former lead singer of Nirvana, created a yellow, lopsided smiley face[4]that Nirvana used as a symbol of their band.[5] In November 2018, Jacobs released his Bootleg Redux Grunge collection,[6]which include the pieces at controversy.[7] The Bootleg Redux Grunge collection was inspired by the grunge collection Jacobs released when he worked with designer, Perry Ellis, in 1993.[8] The late Kurt Cobain’s wife, Courtney Love, admitted in an interview that Jacobs had sent her and Cobain samples of the original collection, but the couple was so unimpressed that they burned them.[9] The lack of support from the couple did not stop Jacobs from releasing this Nirvana-inspired collection and using Nirvana references in his advertisement campaign.[10]
In AMF Inc. v. Sleekcraft Boats, the Ninth Circuit developed 8 factors that it may consider in determining the likeliness of consumer confusion.[11] The factors include the strength of the mark, the proximity of goods, the similarity of the marks, if there is evidence of actual confusion, the marketing channels used by each party, the types of goods, the intent in selecting the mark, and the likelihood of expansion of the lines.[12]Jacobs could argue that Nirvana fans and Jacobs shoppers come from different communities, therefore the people buying Jacobs would never reasonably believe that Nirvana would have license over Jacobs.[13] If Nirvana wants a better chance at being successful in their trademark infringement claim, they may want to focus on the similarity of the marks and the defendant’s intent in selecting the mark.[14] Based on the advertising and the similarity in the design and color scheme, it could be argued that Jacobs wanted his customers to make the connection.[15] Also, despite the anti-establishment messages in their music, the band is a popular, well-known grunge band[16]and Marc Jacobs’s collection is openly inspired by the grunge style. His use of Nirvana references throughout his advertisement campaign could imply that he was hoping to attract the Nirvana-supporting community.
Also, trademark protection does not apply to generic marks.[17]Nirvana will need to show that the consumer would automatically connect the smiley face to Nirvana upon seeing it, and that the consumer would believe that Nirvana endorsed the products that include a substantially similar smiley face.[18] In other words, Nirvana will have to show that the smiley face is not a generic mark. A generic mark functions as “the common descriptive name of an article or substance.”[19] Nirvana would need to show that this logo is more unique than a standard smiley face.
If this case ends up in court, there is a strong possibility that Nirvana could succeed in their trademark and copyright infringement claims. However, based on Marc Jacob’s eagerness to promote the collection on his social media[20], it does not appear that he intends to back down any time soon.
[1]See Marc Jacobs is Being Sued by Nirvana for Copying Logo in Recently Re-Released Grunge Collection, The Fashion Law(Dec. 29, 2019), https://www.thefashionlaw.com/home/marc-jacobs-is-being-sued-by-nirvana-for-copying-logo-in-recently-re-released-grunge-collection (stating that Nirvana, L.L.C. is “the legal entity formed in September 1997 by Dave Grohl, Krist Novoselic, and the Court Love-controlled Cobain Estate”).
[2]Nirvana L.L.C. v. Mark Jacobs Int’l L.L.C, No. 2:18cv10743, 2018 U.S. Dist. Ct. LEXIS, pending, (C.D.C.A. 2018).
[3]See generallyMarc Jacobs is Being Sued by Nirvana for Copying Logo in Recently Re-Released Grunge Collection, supra note 1.
[4]E.g., Smiley Tee, Nirvana Shop,https://shop.nirvana.com/collections/featured/products/smiley-tee(last visited on Feb. 10, 2019) (showing an example of Nirvana merchandise that included the trademarked smiley face),.
[5]SeeMichelle Kaminsky, Nirvana Sues For Copyright Infringement Over Marc Jacobs’s Grunge Redux Collection, Forbes(Dec. 31, 2018), https://www.forbes.com/sites/michellefabio/2018/12/31/nirvana-sues-for-copyright-infringement-over-marc-jacobs-grunge-redux-collection/#78c8457b24e2(“The band claims that [ ] all goods or services that bear the logo are endorsed by or associated with Nirvana.”),.
[6]E.g., Bootleg Grunge Tee, Marc Jacobs, https://www.marcjacobs.com/bootleg-grunge-tee/M4007849.html?dwvar_M4007849_color=001(last visited on Feb. 10, 2019) (showing a piece from the Bootleg Redux Grunge that includes the smiley face claimed to be virtually identical to the Nirvana smiley).
[7]See Marc Jacobs is Being Sued by Nirvana for Copying Logo in Recently Re-Released Grunge Collection, supra note 1.
[8]See Michelle Kaminsky, supra note 5.
[9]See Marc Jacobs is Being Sued by Nirvana for Copying Logo in Recently Re-Released Grunge Collection, supra note 1(explaining the Courtney Love stated that she and her late husband “didn’t like that kind of thing”, referring to the high prices of “otherwise down-market wares”).
[10]See id.(“One ad even features Jacobs himself wearing one of the allegedly infringing t-shirts above the words “Come As You Are,” the title of the group’s 1992 hit.”).
[11]Amf Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
[12]Id. at 348-49.
[13]See Gene Quinn & Steve Branchman, supra note 12 (“Nirvana’s anti-corporate grunge aesthetic could wind up being a detriment to the designation of origin claim.”).
[14]See id. (“When an alleged infringer knowingly adopts a trademark that is similar to the trademark of another, the court is allowed to presume the public will be deceived.”).
[15]Id.
[16]Nirvana Chart History, Billboard,https://www.billboard.com/music/nirvana/chart-history/billboard-200/song/178329(last visited Feb. 10, 2019) (showing that the album Nevermind made the Billboard 200 list over 400 times),.
[17]E.g., Luke M. Rona, Who Are You? Difficulties in Obtaining Trademark Protection For Domain Names, 8 WAJLTA61, 62 (2012) (“Generic marks cannot be registered under trademark law.”).
[18]Gene Quinn & Steve Branchman, Smells Like Trademark Infringement: Nirvana Sues Over Smiley Face Logo, IP Watchdog(Jan. 19, 2019),https://www.ipwatchdog.com/2019/01/18/nirvana-sues-smiley-face-logo/id=105250/.
[19]Lanham Act, 1 UNFAIRCOMP § 3:3 (2018).
[20]The Mark Jacobs, Instagram, https://www.instagram.com/p/BsTATt4AuVN/(last visited Feb. 10, 2019) (showing the photograph that Marc Jacobs posted on his social media a week after the lawsuit was filed against him).
