UPDATE: Marc Jacobs has filed a countersuit against Nirvana, questioning whether or not Kurt Cobain actually created the band’s smiley face logo, according to The Hollywood Reporter. The new countersuit mentions that surviving Nirvana members Dave Grohl and Krist Novoselic previously testified in depositions that they did not know who made the smiley face. “The apparent absence of any living person with first-hand knowledge of the creation of the allegedly work in question, complex with numerous other deficiencies… are the basis for the counterclaim,” the suit reads.
A California judge has allowed Nirvana’s copyright infringement lawsuit against Marc Jacobs to proceed, according to The Hollywood Reporter. The lawsuit centers around a Marc Jacobs T-shirt, which the band says rips off their famous happy face logo.
The shirt in question was part of Marc Jacobs’ “Bootleg Redux Grunge” collection and features what appears to be a version of Nirvana’s asymmetrical smiley face logo. Instead of X’s for eyes, however, it has the letters M and J. And above the smiley face, the word “Nirvana” is replaced by the word “Heaven,” although it’s printed in a type-face roughly similar to the one Nirvana used on their shirts.
Nirvana filed their lawsuit against Marc Jacobs last December, accusing the fashion line of copyright and trademark infringement, false designation of origin and unfair competition. The band also alleged that Marc Jacobs used the happy face logo to “mislead the public into falsely believing that Nirvana endorses the entire ‘Bootleg Redux Grunge’ collection… when Nirvana has not done so.”
In March, Marc Jacobs filed a motion to dismiss the complaint. While the motion acknowledged that the Marc Jacobs shirt was “inspired by vintage Nirvana concert T-shirts from the 1990s,” it argued their shirt was unique enough because the happy face was “reinterpreted” to include Marc Jacobs branding (the M and J for eyes).
The motion to dismiss also hinged on various technicalities, such as: Nirvana didn’t explain how or when Kurt Cobain (who created the design) transferred the rights to the band; that the copyright is invalid because the band didn’t accurately list the design’s first date of publication; and that Nirvana technically owns the copyright to a whole T-shirt with not just the happy face logo, but other text as well (such as the words “flower sniffin kitty pettin baby kissin corporate rock whores”).
In his ruling, Judge John Kronstadt said none of those reasons were enough to justify a motion to dismiss, and that Nirvana’s original complaint was sufficient enough to move forward. Kronstadt, for instance, wrote that the only “discernible difference” between the two shirts is the use of the letters M and J for eyes instead of X’s.
He also pointed out that the Marc Jacobs shirts “have combined this protectable artwork [the happy face] with other distinctive elements of the Nirvana T-shirt, including through the use of yellow lines on black background and a similar type and placement for the text above the image on the clothing.”
Kronstadt also wrote that “the issue presented as to likelihood of confusion is not whether the marks are identical. It is whether they are sufficiently similar ‘in their entirety’ to make confusion likely… Whether a fact-finder may ultimately conclude that certain distinctions ‘render the marks dissimilar’ cannot be resolved through the motion.”