The Nirvana v. Marc Jacobs Legal Battle Takes A Surprising Turn

*** The writing does not, and is not intended to, constitute legal advice by any means***

Feel free to follow my Instagram @hongjunlive

Source: The Guardian

Last year, Nirvana, an iconic American rock band, sued Marc Jacobs, accusing the American designer of infringing Nirvana's copyright in a "Smiley Face" logo. According to the complaint filed with the United States District Court for the Central District of California, Nirvana alleged that Marc Jacobs used, without authorization, its Smiley Face logo ("Smiley") on Marc Jacobs items released under a collection titled "Bootleg Redux Grunge". The complaint, in sum, claimed that Marc Jacobs' wrongful conduct amounted to diluting the value of Nirvana's licenses for clothing products because, over the years, Nirvana has entered numerous licensing agreements in connection with Smiley. See Nirvana, LLC v. Mark Jacobs Int'l, LLC, No. LACV1810743JAKSKX, 2019 WL 7817082, at *2 (C.D. Cal. 2019). Nirvana promoted Smiley as a brainchild of the late Kurt Cobain, using the logo for multiple promotional purposes. Marc Jacobs moved to dismiss the lawsuit, but the presiding judge refused to grant the dismissal because Nirvana as a plaintiff adequately pleaded that "Marc Jacobs have copied original aspects of Nirvana's copyrighted material". Id at *12. So far, this sounds like a typical scenario for a copyright infringement lawsuit, except that the two legal actors are pioneers in their respective universes, namely music and fashion.

Things then took a dramatic turn when Robert Fischer, an art director for Nirvana, came forward to claim that he is the true and sole creator of Smiley. Mr. Fischer believes that he has a significant personal stake in the outcome of the case and should thus be joined in the current litigation as an intervenor. (It suffices to say here that Rule 24 of Federal Rules of Civil Procedure covers the legal basis for intervention.) Mr. Fischer's story is that, contrary to popular belief, he conceived and gave life to Smiley while he was "off-the-clock". The off-the-clock language nicely prefigures a potential defense anticipated to knock off Mr. Fischer's claim. A lawyer for Mr. Fischer would emphatically point out that Smiley should never be treated as a work-made-for-hire under the Copyright Act. See 17 U.S.C. § 101. According to the Act, the copyright of a work created in the course of employment subsists in the employer (Nirvana, in this case). 

The court will have a hearing next March. My conjecture is that Mr. Fischer would be allowed to intervene under permissive intervention because Mr. Fischer "has a claim that shares with the main action a common question of law or fact" - essentially, who owns the copyright of Smiley? Nirvana federally registered Smiley with the Copyright Office, which serves as a prima facie evidence of valid ownership. Yet, Mr. Fischer is also entitled to common law copyright protection if he is indeed the true and sole creator of Smiley. A work of original authorship receives copyright protection the moment it is created and fixed in a tangible medium.

Having said that, there are a couple of interesting interplays in this growing legal saga. First, it seems to me that Mr. Fischer is much more interested in hearing a sincere apology from both Nirvana and Marc Jacobs rather than securing monetary compensations. He made clear that he has no intention of seeking the profits either Nirvana or Marc Jacobs has earned to this date with respect to the use of Smiley. Second, with Kurt Cobain gone, no one has the firsthand factual knowledge as to who actually created Smiley. It would be challenging to ferret out the truth based on hard-to-substantiate statements. Surviving members of Nirvana has not provided any sworn testimony to establish that Kurt Cobain created Smiley. The battle over the rightful ownership of Smiley is ironically not so smiley!