On November 8, 2019, a federal judge denied a motion by Defendant Marc Jacobs International LLC and other defendants to dismiss Plaintiff Nirvana LLC’s copyright and trademark infringement lawsuit regarding a “smiley face” design and logo Nirvana claims to own. Nirvana’s complaint alleges that items in Marc Jacobs’ “Bootleg Redux Grunge” clothing collection infringed Nirvana’s rights to the smiley face design and logo, which its co-founder, Kurt Cobain, created in 1991 and which Nirvana has used continuously since 1992 to identify its music and licensed merchandise.

The clothing items in question – primarily a t-shirt included in the Bootleg Redux Grunge collection – feature what allegedly appears to be a version of Nirvana’s asymmetrical smiley face logo. Whereas Nirvana’s design features X’s for eyes, however, Marc Jacobs’ t-shirt has the letters M and J. Above the smiley face, Marc Jacobs’ t-shirt uses the word “Heaven,” whereas Nirvana’s original design uses the word “Nirvana.” The typeface used in the competing designs is similar, and both designs consist of a yellow smiley face against a black background. Nirvana brought suit against the Defendants in December 2018, accusing them of copyright and trademark infringement, false designation of origin, and unfair competition.

The court first addressed Defendants’ motion to dismiss Nirvana’s copyright infringement claim, finding that Nirvana had stated a valid claim. The court ultimately rejected Defendants’ argument that the image on the Marc Jacobs products is not “substantially similar” to Nirvana’s design, finding that “a review of the images confirms that the allegation as to substantial similarity is sufficient.” The court noted that the similarities included the slightly asymmetrical circle shape of the face, the relatively wide placement of the eyes, the distinctive “squiggle” of the mouth, and the placement and use of a stuck-out tongue. The court found that the only discernible difference is the use of “M J” eyes in Defendants’ version instead of the “X” eyes used on Nirvana’s version.

In reaching its conclusion on Defendants’ copyright claim, the court also rejected Defendants’ arguments that (i) Nirvana failed to explain how or when Kurt Cobain transferred the rights to the band; (ii) the copyright is invalid because Nirvana did not accurately list the design’s first date of publication; and (iii) the logo represents only a fraction of the components of Nirvana’s registration, since Nirvana actually owns the copyright to a whole t-shirt with not just the happy face logo, but other text as well. The court found that none of Defendants’ technical arguments warranted dismissal of Nirvana’s claims at the pleading stage, and that Nirvana’s original complaint alleged a valid copyright claim for copyright infringement.

The court also found that Nirvana’s trademark infringement claims were adequately pleaded. The court found Nirvana had sufficiently alleged its protectible interest in, and senior use in commerce of, the smiley face design, such that the smiley face is widely associated with and identifies Nirvana as the source of the goods that bear the smiley face in the minds of consumers. The court further found that Nirvana sufficiently alleged Defendants’ products are sufficiently similar to Nirvana’s so as to cause confusion about whether Defendants’ products were endorsed by or associated with Nirvana. The court also rejected Defendants’ argument that replacing Nirvana’s “X” eyes with “M J” eyes rendered the marks dissimilar, stating that relevant inquiry “is not whether the marks are identical,” but whether they are sufficiently similar to make confusion likely.

The court’s opinion can be found here.