Courts Look at “Substantial Similarity” in Nirvana’s Happy Face Copyright Claims Against Mark Jacobs

Fashion giant Marc Jacobs and grunge music icon Nirvana have been squaring off in court over claims of copyright and trademark infringement.  In the latest chapter, the court dismissed a motion by Marc Jacobs to dismiss Nirvana’s lawsuit, holding that Nirvana has demonstrated enough substantial similarity to support its claims of infringement.   

Standard of Substantially Similar in Copyright Claims

At the heart of the case is a smiley face (“Happy Face”) that Nirvana has copyrighted.  Nirvana has used a yellow smiley face with ‘X’s’ as the eyes and a wavy line as the mouth with a tongue sticking out as part of its brand for the past twenty-five years.  With the smiley face at the foundation, Nirvana has launched t-shirts and merchandise that play off the artwork, often using yellow lines on black background and other distinctive elements that Nirvana claims Marc Jacobs has now infringed upon. 

Nirvana further argues that because Happy Face has come to symbolize the goodwill that Nirvana has built as an entertainment act, Marc Jacobs’s actions not only qualify as copyright infringement of Happy Face, but as trademark infringement as well.  As such, Nirvana also alleges trademark infringement and false designation of origin over Happy Face.  

Jacobs Files Motion To Dismiss Nirvana’s Happy Face Copyright and TM Claims

Marc Jacobs filed a motion to dismiss alleging that Nirvana never held a proper trademark registration for Happy Face, and although Nirvana does own a copyright registration for Happy Face, the artwork in question only accounts for a mere fraction of the artwork featured in the Marc Jacobs line.  

In its decision over the motion to dismiss, the court sided with Nirvana, noting that it was plausible that consumers may indeed mistakenly believe that Nirvana is endorsing the new Marc Jacobs line, which is called the “Redux Grunge Collection 1993/2018.”  In the Marc Jacobs line, the fashion designer uses a smiley face that has “M” and “J” as its eyes with a wavy mouth that has a tongue sticking out.  Interestingly, this is the second time that Marc Jacobs had tried his hand at a Nirvana-inspired fashion collection, as twenty-five years ago, Marc Jacobs sent samples of a grunge line to Nirvana lead singer Kurt Cobain, which was rejected outright back then.

Despite Marc Jacobs’s Best Efforts, Nirvana’s Lawsuit Will Continue  

In determining whether or not Nirvana’s trademark and copyright claims could continue, the court considered:

• whether there was substantial similarity between the artworks at issue;

• whether the public could be confused about endorsement by Nirvana;

• whether Nirvana’s claims were pleaded correctly; and

• whether Nirvana actually held the trademark and copyright rights claimed.

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