The Central District of California recently refused to nix Nirvana LLC's copyright and trademark infringement claims against fashion juggernauts Marc Jacobs, Saks, and Neiman Marcus (the "Defendants") over Defendants' use of what Nirvana deems a "virtually identical copy" of Nirvana's "happy face" copyright and trademark.

Nirvana—the rock band often credited for popularizing the alternative/grunge rock genre—claims ownership in a copyright for a "happy face" design for a tee shirt, as depicted below. The design was created in 1991 by Kurt Cobain, Nirvana's lead singer and registered in 1993 by Nirvana, Inc. (Reg. No. VA0000564166; the "'166 Registration"). The '166 Registration was later assigned to Nirvana in 1997 and then to Nirvana LLC ("Nirvana LLC"), the plaintiff in this action, in 1998. 

Nirvana LLC also claims trademark rights in the "happy face" based on continuous use since 1992 to identify its music and licensed merchandise.

In November 2018, fashion designer Marc Jacobs released, and Saks and Neiman Marcus sell, a clothing collection—called the "Bootleg Redux Grunge—that depicts a variation on the Nirvana "happy face" logo, as depicted below:

Believing the Bootleg Redux Grunge line "utilize[s] a design and logo virtually identical to Nirvana's copyright image," Nirvana LLC sued the Defendants for copyright infringement, false designation of origin under the Lanham Act, and California trademark infringement and unfair competition.

The Defendants moved to dismiss Nirvana LLC's copyright claim, arguing (1) Nirvana LLC failed to allege it is the owner of the '166 Registration, (2) Nirvana LLC cannot allege that the '166 Registration is valid, and (3) Nirvana LLC cannot plead extrinsic similarity between the '166 Registration and Defendants' products. The Defendants' also moved to dismiss Nirvana LLC's trademark claims, arguing (1) there is insufficient evidence to demonstrate use as a trademark before the launch of the accused products, (2) there is no likelihood of confusion, and (3) they are preempted by the Copyright Act. The court rejected each of Defendants' arguments and denied their Motion to Dismiss.

To establish copyright infringement, Nirvana LLC must demonstrate ownership of a valid copyright and related registration.  Defendants claimed that Nirvana LLC failed to do so because it did not allege that Kurt Cobain, the original author of the Nirvana "happy face", transferred his rights in the "happy face" design to Nirvana, Inc. prior to Nirvana Inc.'s registration of the design in 1993. The court held that "such an allegation [was] not required to state a claim," and that adequacy of Nirvana LLC's chain of title was an issue Defendants must respond to on the merits through discovery. Nonetheless, the court noted the importance of the "chain of title" issue, stating that it was one "for which prompt discovery [was] warranted" and ordered the parties to meet and confer to adopt a process for focused discovery related to the chain of title.   

Next, the court turned to the validity of the '166 Registration. Generally, a copyright registration is prima facie evidence of the validity of the copyright. A party can rebut that presumption through evidence that inaccurate information was knowingly included in the application for copyright registration, and that information, if known by the Copyright Office, would have caused refusal of the registration.

Defendants argued that the date of first publication in the '166 Registration is inaccurate, and, as a result, the '166 Registration is invalid.  The '166 Registration claims a first publication date of November 1, 1991. Defendants claim that Nirvana LLC admits, in its complaint, that the "happy face" design was first published on a poster promoting Nirvana's Nevermind album no later than September 13, 1991. But, according to the Copyright Act, a "public display" of a work does not itself constitute publication. The work must either be distributed or offered to be distributed to a group of persons for further distribution. The court found that, when viewed in the light most favorable to Nirvana LLC, it was possible "the poster could have merely been 'publicly displayed,' rather than distributed," and Defendants had not met their burden to producing evidence indicating otherwise. Indeed, the court refused to consider such evidence because it was inappropriate at the motion to dismiss stage. As such, Nirvana LLC's pleading adequately alleged there are no inaccurate statements in the '166 Registration and the Registration is valid.

The court then considered whether the accused mark was "substantially similar" to the design shown in the '166 Registration. The court may consider both extrinsic similarity—objective similarity of protectable elements—and intrinsic similarity—"total concept and feel"—in making this determination. But, because only extrinsic similarity may be determined as a matter of law, the court solely focused on extrinsic similarity. 

According to the court, "a review of the images confirms that the allegation as to substantial similarity is sufficient." 

Specifically, the court found that both works included (1) "the slightly asymmetrical circle shape of the face," (2) "the relatively wide placement of the eyes," (3) "the distinctive 'squiggle' of the mouth, and (4) the placement and shape of the "stuck out" tongue. The only discernible difference, according to the court, was the use of "MJ" eyes in the accused product versus "X" eyes in the '166 Registration.  But "this difference [did] not, as a matter of law, preclude Plaintiff's substantial similarity claim," and the court thus denied Defendants' motion to dismiss Nirvana LLC's copyright claim.

Shifting to Nirvana LLC's trademark allegations, the court found Nirvana LLC adequately alleged the elements necessary to plead its federal and state trademark claims—a valid and protectable trademark and likelihood of confusion. Regarding validity, Nirvana LLC alleged it had used the "happy face" design for more than 25 years to identify merchandise and services, and consumers had come to associate that mark with the band Nirvana. The court noted the lack of detail in these allegations, but nevertheless deemed them sufficient to overcome Defendants' motion. Regarding likelihood of confusion, Defendants' argued their use of "MJ" eyes instead of "X" eyes negated confusion as a matter of law. But, the court explained that "the issue presented as to likelihood of confusion is not whether the marks are identical. It is whether they are sufficiently similar 'in their entirety' to make confusion likely." For the same reasons the court found Nirvana LLC pleaded "substantial similarity" for copyright infringement, the court found Nirvana LLC adequately pleaded likelihood of confusion for trademark infringement.

Finally, the court found that the Copyright Act did not preempt Nirvana LLC's federal or state trademark infringement claims. For the federal claims, the court found that "[t]he Lanham Act claim cannot be preempted by the Copyright Act." And for the state claims, there were sufficient allegations as to the distinct elements required by the state trademark claims such that they were not preempted.

The case is Nirvana, LLC v. Mark Jacobs International, LLC, et al, 2:18-cv-10743 (C.D. Cal. November 8, 2019).

(The official case caption incorrectly refers to Defendant "Marc Jacobs International, LLC" as "Mark Jacobs International, LLC".)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.