Fashion designer Marc Jacobs is being sued for copyright infringement in the US by representatives of the 90s grunge band Nirvana after the designer produced items of clothing that make use of the classic black and yellow ‘smiley face’ logo that characterised the band’s brand at the time.

The Designs

In November of last year, Jacobs reissued his infamous 1993 Grunge Collection in his 2018 Bootleg Redux Grunge Collection. The collection featured a design near identical to Nirvana’s logo and is the subject of the claim.

The Nirvana image with US copyright registration no. VA0000564166 is below and as the suit describes is used on “t-shirts, shirts, hats, hoodies, bags, backpacks, glasses, wallets, and other items of merchandise, many of which have sold extensively for decades, both with and without use of the “Nirvana” mark adjacent to the Smiley Face design and logo.”

Credit: Nirvana, Copyright Registration No. VA0000564166

A similar design appears on the below Marc Jacobs t-shirt. Here the logo appears near identical save for the eyes of the smiley face which replaces two crosses with the letters M and J.

Credit: Marc Jacobs

Copyright in the USA

Copyright protection in the US is governed primarily by the basic framework provided by the Copyright Act 1976 preventing the unauthorised general copying of a work of authorship, for example in having the rights of reproduction. Much like in the UK, copyright specifically protects the work itself, not the overall idea, but the degree of similarity between the present works would indicate that the Marc Jacobs design is an unauthorised reproduction of the Nirvana design.

As in the UK, copyright protection does occur at the point of authorship automatically, regardless of registration, but in the US a rights holder can register their work for copyright protection. In particular, this process clarifies the authority of the registrant as the proper party to commence proceedings, and provides prima facie evidence in court of the validity of the copyright.

Copyright Infringement in the Smiley Face

The Nirvana smiley face was allegedly designed by front-man Kurt Cobain in 1991, and first made an appearance on a flyer advertising a launch party of their Nevermind album for that same year.

Evidence like this would be crucial in determining whether copyright subsists and the band’s representatives at least contend they maintain the copyright in the image which was registered in 1993 (No. VA0000564166). They must then further prove their design was used unlawfully in a way that created an unauthorised substantial similarity between the two designs, which should be relatively easy to prove given their similarity.

The present suit is alleging that Jacobs is using the image to create a clear association to the band in order to appear “more authentic”. It adds that the unauthorised use of such an image is threatening ‘”to dilute the value of Nirvana’s licences with its licensees for clothing products”.

Following an unsuccessful pre-trial demand that Marc Jacobs cease the infringing conduct, the group is now pursuing the claim in court, in particular with a mind to attain monetary damages and the removal of sale of any products with the iconography.

As of yet Jacobs has not responded. On the face of it, it is difficult to see how there is no copyright infringement, and it may be that this is a carefully calculated PR stunt by the fashion designer.