Marc Jacobs Files a Motion to Dismiss Nirvana’s Suit Alleging Copyright and Trademark Infringement 

By Thomas Dunlap

“It’s ironic how much trouble a smile can cause,..” lawyers for Marc Jacobs wrote in a motion to dismiss the two-year lawsuit brought by the holder of the 90s grunge band Nirvana’s Intellectual Property. [1] In 2018, Nirvana, LLC sued Marc Jacobs (and associated retailers) for using a variation of Nirvana’s iconic X-eyed smiley face with a tongue sticking out the logo in its “Bootleg Redux Grunge” fashion line. The suit includes claims of both copyright and trademark infringement.

In response to all alleged claims, Marc Jacobs filed a motion requesting summary judgment dismissal on November 2, 2020. The motion cites bad faith and factual inaccuracies as grounds for invalidating the intellectual property rights and dismissing the lawsuit. The most striking claim of Marc Jacobs’ is one denying Nirvana’s copyrights based on a potential ownership invalidation. The motion claims that the smiley design was never properly registered by Nirvana and that Nirvana may not have even had the right to register the work in the first place.

Nirvana first used the iconic smiley face logo in 1991 on a flyer promoting the band’s album, Nevermind.[2] Attributed initially to Nirvana’s lead singer, Kurt Cobain, the logo was registered for t-shirts and listed Cobain as the author.[3] Through discovery, it was revealed that Robert Fischer, a graphic designer and employee of Geffen Records at the time, maybe the actual creator of the disputed logo.[7] As Robert Fischer was neither employed by Nirvana Inc. nor contracted through a “work for hire” basis, Marc Jacobs argues that Fischer’s authorship invalidates Nirvana’s copyrights.

Under United States copyright law, the general rule is that the person who created the work is the owner.  In this case that appears to be Fischer. This initial ownership can vary only if the initial author was employed by a company as a full-time employee and creating the work or the employer, or by written contract called a “work for hire” agreement, that explicitly transfers the rights to a copyrighted work (either before or after the work is complete).  In either case, a “work for hire” would then have been legally “authored by” and owned by the employer.

In an interview, Fischer stated that he does not wish to seek damages from Nirvana if proven that he is the original creator.[4] He shared, “since I drew it, I want to be known as the guy who drew it. It is as simple as that. I don’t think it’s fair that they try and take out copyright and say Kurt did it.”

In response to the authorship claim, an attorney for Nirvana LLC wrote it is “factually and legally baseless.” He added, “We are marching forward. The copyright Marc Jacobs undertook for his financial benefit is very far from protectable under any theory.”

In response to common law trademark claims as a catch-all for copyright registration inaccuracies, Marc Jacob argues that the market is saturated with the smiley face symbol, and it cannot be attributed to one entity.[5] Due to the factual inaccuracies claimed by Marc Jacobs, the designer filed another motion seeking sanctions for bringing bad faith claims.[6]

The court has not yet ruled on this motion, but both parties have significant financial interests in the outcome. “Here we are now, entertain us. . .”  but due to the coronavirus pandemic, the hearing has been postponed to April 2021.


[1]Def. ’s Notice of Mot. & Mot. for Summ. J.; Mem. Of P. & A. in Supp. Thereof at 14, Nirvana v. Marc Jacobs, No. 2:18-cv-10743 (C.D. Cal. November 2, 2020), ECF No. 125.

[2] Steven Appleford, Who Created Nirvana’s Famed Smiley-Face Logo? New Claimant, L.A. Times (September 22, 2020), https://www.latimes.com/entertainment-arts/music/story/2020-09-22/nirvana-smiley-face-logo-kurt-cobain-marc-jacobs-lawsuit.

[3] Bill Donahue, Marc Jacobs Says Kurt Cobain Didn’t Create Nirvana Logo, Law 360 (November 13, 2020), https://www.law360.com/ip/articles/1325816/marc-jacobs-says-kurt-cobain-didn-t-create-nirvana-logo.

[4] Appleford, supra note 5.

[5] Def. ’s Notice, supra note 1.

[6] Donahue, supra note 6.

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Posted in: Copyright, Intellectual Property, Intellectual Property - Trademarks, TTAB