The Legal Battle Between Marc Jacobs and Nirvana Continues: MJ Files A Motion for Summary Judgment

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

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Marc Jacobs sweatshirt from its Grunge Redux collection 

Marc Jacobs filed a motion for summary judgment last week, resuming its uphill battle against Nirvana. Initiated by Nirvana back in 2018, the lawsuit centers around Marc Jacobs' use of "a graphic of a smiley face with an "M" and "J" for eyes". Nirvana (or Nirvana, LLC., its corporate entity, to be exact) contended in its 2018 complaint that the graphic violates its rights relating to "Smiley Face", accusing the American designer for copyright and trademark infringements. (See my earlier post to learn the factual background of the case.) In today's post, I address how the attorneys for Marc Jacobs retorted to Nirvana's copyright infringement accusation. (Note: I will explain the trademark issue in a separate post next week because I want to use it to illustrate how surveys work in trademark cases.)

When evaluating a summary judgment motion, it helps to break down the claim into its elements. Why? As a moving party, Marc Jacobs has to show that there is no genuine issue of material fact that warrants a trial. That is, Marc Jacobs has to persuade the presiding judge that the ruling can be reached solely on the basis of law ("as a matter of law", legally speaking) because no facts are in dispute. So here's the magic formula.

COPYRIGHT INFRINGEMENT = VALID OWNERSHIP + ILLICIT COPYING

i) On Valid Ownership

Valid ownership is a precondition to commence an action for copyright infringement. Marc Jacobs argues that Nirvana's copyright registration should be deemed invalid because the registration contains false statements, including the name of the author. Had the Copyright Office known about these material mistakes, it would have not granted the registration in the first place. It specifically highlights that Nirvana failed to produce evidence that establishes Kurt Cobain is the actual creator of the Smiley Face logo, as stated on the certificate. In fact, an artist named Robert Fischer recently submitted a sworn testimony that he is the real author of the work. A copyright registration certificate serves as a prima facie evidence of valid ownership. What that means is that the burden falls on the opposing side (in this case, Marc Jacobs) to rebut the assumption. Based on this evidence, Marc Jacobs believes it successfully rebutted that often-insurmountable assumption. In sum, Marc Jacobs maintains that precedents compel the legal conclusion that Nirvana's purported valid ownership should now be rendered void because the certificate was obtained fraudulently.

ii) On Illicit Copying

Marc Jacobs asserts that its graphic does not amount to copying because the two works are not substantially similar. Substantial similarity is a standard for determining whether illicit copying occurred. As of now, circuits are split on how to approach the question of substantial similarity. The Ninth Circuit (to which California belong) is adopting the so-called intrinsic-extrinsic test. The intrinsic portion of the test focuses on the overall impression, or the look and feel, of the two works and the issue is often best left to the jury. Since no jury can possibly be involved at the summary judgment level, Marc Jacobs suggests that the judge can throw out the case by looking at the extrinsic portion of the test only. The extrinsic portion makes an inquiry into "whether the protectible elements, standing alone, are substantially similar". Applying it to the case, Marc Jacobs puts forth the argument that its graphic, after filtering out non-protectible elements, cannot and does not infringe upon the Smiley Face logo because "a substantially circular outline for a face and a roughly half circle smile are standard features in the treatment of the idea of a smiley face on clothing". In other words, that's how other people would also draw a smiley face. Even then, Marc Jacobs further indicates that the addition of "M" and "J" made the graphic something new, expressive, and creative.

The attorneys for Marc Jacobs note that "it is ironic how much trouble a smile can cause" in the first sentence of the motion. Nothing captures the case more accurately than those 10 words.