A Not-So-Smiley Situation: The (Perhaps-Changing) Role of Surveys in Trademark Infringement Cases
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| The Nirvana Smiley logo |
I promised last week that I will revisit the Nirvana v. Marc Jacobs case. So here we are! In the previous post, I discussed the copyright issue of the lawsuit. Today, we will change gears and delve into another equally important issue in the case - trademark. So far, I haven't really talked about the role of surveys in trademark infringement cases primarily because I was waiting to find the right case - right in the sense that a) the case is fashion-related and b) the survey cited in the case is relatively easy to understand - to fully explore the concept and vividly illustrate its application in practice. I should say right up front that this case couldn't have arrived at a more opportune time, and you'll see why in a moment. So, let's dig in.
In its motion for summary judgment, Marc Jacobs starts out by claiming that the Nirvana Smiley logo (pictured above) does not function as a valid trademark to begin with because it fails to indicate the source of a product featuring the logo. To corroborate its claim, Marc Jacobs submits as evidence an expert survey. According to the survey, an overwhelming number of the respondents failed to make the association between the Smiley logo and Nirvana. In other words, when consumers come across products bearing the logo in real life, they do not think Nirvana is their producer. Then, Marc Jacobs, in my opinion, makes a really clever maneuver. It further argues that, even assuming that the logo serves as a source identifier, it has not acquired a level of distinctiveness, or secondary meaning in legalese, that warrants protection. Why? Because no consumer in the market will be possibly misled as to the source of a product. Marc Jacobs also points out that Nirvana did not produce any survey to prove that its Smiley logo is distinctive enough if it truly believes it owns the trademark in the logo. The overarching theme, which I find quite persuasive, is that an inquiry into a showing of secondary meaning is wholly unnecessary because "achieving secondary meaning is impossible" for marks like Nirvana's in the first place.
This particular argument instantly reminded me of an interesting observation a guest speaker at my trademark law class made the other day. Doctrinally speaking, surveys, for the most part, address the question of whether the disputed mark gained a secondary meaning, as measured by the degree of public perception. However, the speaker (who is a practicing attorney) remarked that nowadays surveys are increasingly used to prove (or disprove) the validity of a given trademark, which is the threshold question in any trademark infringement case. I believe that's what actually happened here. Marc Jacobs introduced the survey (by the way, expert surveys are really expensive) to vitiate the logo's validity. Marc Jacobs is posing the following question: How can the Smiley logo function as a trademark when the relevant consumers in the market do not even conjure up Nirvana upon seeing the logo after all? It is subtly different from saying that the mark is not distinctive enough. There, you're attacking the strength of a valid mark. I think the attorneys for Marc Jacobs made this strategic choice because Marc Jacobs has a strong interest in securing the rightful ownership of its allegedly infringing logo so that the designer can continue to play with it in future collections, especially given the wide success of the Redux Grunge Collection.
Circling back, remember I said in the introduction that you'll soon see as well how timely this case arrived? Indeed, it nicely lines up with the lecturer's perceptive observation as to the slightly changing role of surveys in courtrooms. Finally, as I alluded in an earlier post, a man named Robert Fischer suddenly came forward, saying that he is the real creator of the Smiley logo. He forcefully maintained that he designed the logo off-the-clock to prevent Nirvana from raising a work-made-for-hire defense. (If the work is made for hire, the employer owns the work and the rights associated with it). Nirvana sued Robert Fischer last week to seek a declaratory judgment, meaning a court will declare the rights of respective parties, specifically in connection with the ownership issue. So it seems like we have to wait longer to see who will smile in the end. But for now, Smiley is the only one smiling.
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