The fashion designer asked the suit to be dismissed, saying Nirvana doesn't own the copyright and there are pronounced differences between the designs.
Marc Jacobs is asking a judge to dismiss a lawsuit filed by Nirvana last December that alleged copyright infringement over images used in the fashion designer's "Bootleg Redux Grunge" collection resembling the band's iconic happy face logo.
In documents filed Friday in a California federal court and obtained by Billboard, the designer's lawyers argue Nirvana does not own the copyright to the smiley face design, that the registration is invalid and, further, that there are pronounced differences between the material covered by Nirvana's registration and the artwork used by Marc Jacobs. The news was first reported by The Blast.
"The Complaint stems from the false premise that the Plaintiff owns a U.S. copyright registration on a smiley face design (albeit a different one than the one found on the Accused Products), when in fact, that smiley face is merely a fraction of the full artwork covered by the registration and the remainder of the covered artwork is not alleged to have been used on the Accused Products," the motion reads. "For the reasons stated herein, the Complaint should be dismissed for failing to state a claim upon which relief can be granted with regard to each cause of action."
The "Redux Grunge Collection" was unveiled in November 2018 to celebrate the 25th anniversary of Marc Jacobs' SS93 Grunge Collection, which was defined by a smiley face logo. The Marc Jacobs version features an M and a J instead of Xs for its eyes (as in the Nirvana version), and it reads "HEAVEN" instead of "NIRVANA" in a typeface similar to the band's font.
Nirvana, L.L.C, the plaintiff in the case, was formed in 1997 to manage the band's affairs by surviving members Dave Grohl and Krist Novoselic, along with the estate for late frontman Kurt Cobain, controlled by Cobain's widow Courtney Love. The company's lawsuit is claiming that the sale of the smiley face-featuring Marc Jacobs products constitutes copyright infringement, false designation of origin, trademark infringement and unfair competition.
The motion to dimiss that case also argues that while the copyright for the "X-Eye Smiley Face" was registered to Cobain circa 1991, it is unclear when or how the registration (referred to as the "'166 Registration") was transferred to Nirvana, Inc. as both the author of the work and the copyright claimant. "The Complaint does not allege how or whether Mr. Cobain’s rights in all or part of the artwork were transferred to Nirvana, Inc.," the motion reads. "The Complaint is also silent on who created the other components of the registered artwork and how or whether those rights were transferred."
Also included in the motion is a side-by-side chart comparing the components of the Nirvana logo to the imagery used by Marc Jacobs, as well as positive comments made by Love and her daughter with Cobain, Frances Bean Cobain, about the Marc Jacobs collection on Instagram.
"Both Ms. Love and Ms. Cobain 'liked' and commented on the images of the collection that Mr. Jacobs posted on his Instagram feed, including, notably, images of Mr. Jacobs in the t-shirt that is one of the Accused Products. Ms. Love commented on one of the images of Mr. Jacobs in that shirt, saying, 'Nice photo! Looks some [sic] what familiar! Amazing!'”
The Nirvana, L.L.C. lawsuit also names department stores Saks Incorporated and Neiman Marcus as defendants for selling the allegedly infringing products. The suit is seeking monetary damages as well as the stop of sale of those items and the removal of the smiley face imagery from all Marc Jacobs promotional materials.
Attorneys for both sides declined to comment.