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Marc Jacobs seeks dismissal of Nirvana t-shirt case because Kurt Cobain didn’t create the famous smiley face

By | Published on Thursday 5 November 2020

Marc Jacobs Nirvana t-shirt

Fashion firm Marc Jacobs has returned to court again seeking dismissal of the ongoing legal battle over those Nirvana-esque t-shirts it sold.

In 2018, the retail chain run by fashion designer Jacobs put on sale a grungy clothing line that included a t-shirt clearly influenced by the famous smiley face image used by Nirvana on its merchandise back in the 1990s.

Nirvana LLC, which controls many of the band’s IP rights, sued the Marc Jacobs company in December 2018, arguing that the fashion firm’s smiley face shirt infringed its intellectual property.

Jacobs initially argued that there were enough differences between the old Nirvana t-shirt design and his company’s t-shirt design to reject any claim of copyright infringement. However, in November last year, a judge rejected the designer’s motion to have the case dismissed based on that argument.

The fashion firm subsequently presented other arguments to the court, including disputing claims that Kurt Cobain had created the band’s smiley face image and then assigned the rights in it to the Nirvana company. That argument has now been expanded with Jacobs claiming that the smiley face design was actually created by a record label designer, meaning Nirvana LLC doesn’t own the copyright in the original image. And based on that claim, Jacobs again asks for the case to be dismissed.

In a new legal filing this week, Marc Jacobs states: “This entire case starts from the false premise that Mr Kurt Cobain created the t-shirt design that is the subject of the registration. However, the evidence in the record shows that the creator of the registered t-shirt design is art director Mr Robert Fisher, who was not an employee of plaintiff’s processor Nirvana Inc, the copyright claimant listed on the registration, and who has sworn that he did not transfer his rights [to] anyone. There is no written or oral agreement that says otherwise”.

Elsewhere in the motion to dismiss, the clothing company again argues that the two smiley face images are not sufficiently similar to constitute copyright infringement. Meanwhile, responding to an additional claim by Nirvana LLC that its smiley face is also protected under trademark law, albeit as an unregistered mark, the new legal filing says “the disputed smiley is not protectable because it is a ubiquitous symbol”.

It remains to be seen if this latest attempt to get the smiley face case dismissed is successful. Marc Jacobs is also seeking sanctions against Nirvana LLC, mainly on the basis it incorrectly presented as “fact” in its original complaint that Cobain created the allegedly infringed image. It will be interesting to see how the judge responds to that request too.