Nirvana's 'Happy Face' Lawsuit Against Marc Jacobs Can Move Forward, Judge Rules

Nirvana
Paul Bergen/Redferns

Dave Grohl, Kurt Cobain and Krist Novoselic of Nirvana photographed in 1991.

The band claims the clothing designer infringed its copyright and trademark in the iconic design.

Nirvana LLC’s lawsuit against fashion label Marc Jacobs and department stores Saks Incorporated and Neiman Marcus can move forward, a federal judge has ruled.

In a decision handed down Nov. 8, U.S. District Court Judge John Kronstadt denied the defendants’ motion to dismiss the suit. They are accused of copyright and trademark infringement, false designation of origin and unfair competition over the sale of a clothing line that bears a design Nirvana claims is substantially similar to the band’s iconic “happy face” logo.

In the original complaint filed last December, Nirvana claimed the happy face logo had “become widely associated with” the band “in the minds of the consuming public,” leading to a reasonable assumption that all merchandise bearing the logo was “endorsed by or associated with” the grunge icons. By using a logo Nirvana claims is “obviously similar” to the happy face for Marc Jacobs’ “Bootleg Redux Grunge” clothing line introduced last November, the clothing designer -- along with retailers Saks and Neiman Marcus -- risked diluting the value of the band’s license in the design, the complaint alleged.

In response, the defendants’ motion to dismiss alleged that Nirvana LLC had failed to establish that it was the rightful owner of the copyright registration for the happy face logo and that it had not demonstrated a substantial similarity between it and the logo used in the Marc Jacobs clothing line. Additionally, they claimed that because the original copyright registration had been for the happy face logo in tandem with other design elements -- i.e. “the entirety of the protectable elements” -- that they could not claim a protectable copyright over the happy face alone.

In his Friday decision ruling against the defendants’ motion to dismiss, the judge refuted each of these claims in turn, stating that Nirvana LLC’s original complaint sufficiently established that the band owns the copyright, that the happy face logo can be claimed as a protectable copyright separate from the rest of the design elements and that a simple visual review of the two logos side by side satisfied an extrinsic test of substantial similarity.

Regarding the trademark portion of the original complaint -- which is separate from copyright -- Kronstadt also refuted the defense's claim that Nirvana had failed to establish its use of the happy face as a trademark prior to the launch of the Marc Jacobs clothing line. He found that the band had “plausibly allege[d]” it has used the happy face as a trademark for more than 25 years. Additionally, he said Marc Jacobs’ use of the letters “M J” in place of the letters “X X” used in the original design (both denoting eyes) was not enough to preclude the likelihood of confusion for consumers between the two, as the defense had claimed.

Representatives for Marc Jacobs, Saks and Neiman Marcus did not respond to Billboard's request for comment by press time. 

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