Wipe that smiley off your face!

January 3, 2019, By

Nirvana has issued proceedings for copyright infringement against Marc Jacobs International, alleging that that the fashion brand is infringing the copyright in the band’s smiley face logo.

The complaint filed by Nirvana claims that the late Kurt Cobain created the logo in 1991 and Nirvana has used it since 1992 to identify its music.

In November 2018, Marc Jacobs International released several items including a t-shirt as part of its “Bootleg Redux Grunge” collection.

Nirvana alleges that the activities of Marc Jacobs International are “oppressive, fraudulent, and malicious,” causing the band “irreparable injuries,” which “threaten to dilute the value of Nirvana’s licenses with its licensees for clothing products.”

Nirvana is seeking injunctive relief and monetary damages in the United States District Court for the District of Central California. The full text of the complaint is available here.

Briffa comment

There are a few points to take away from the Nirvana Marc / Marc Jacobs International copyright saga:

First, copyright is an incredibly important and valuable IP right. There are two main reasons for this view. (1) Copyright arises automatically and there are no lengthy and expensive registration processes to secure the right (compare patents). Even in territories where copyright is registrable (e.g. the US and China), there are relatively few formalities and the process is straightforward. (2) Copyright protects a broad spectrum of materials including artistic works, literary works (including software), film and sound recording and databases. In order ensure maximum protection for its intellectual property, businesses should investigate all valuable materials that may be susceptible to copyright and take steps to secure copyright ownership for the business.

Second, proving infringement can be tricky. To recover on a copyright infringement claim, the copyright holder must prove: (1) ownership of a valid and subsisting copyright; and (2) that the alleged infringer has used the whole or a substantial part of the earlier work without authorisation. In some cases, ascertaining what constitutes a ‘substantial part’ of the earlier work can be a thorny question because both a quantitative and qualitative analysis is required. However, in this case, in this writer’s opinion, taking into account colour, font, positing and particular features that are surely more likely have arisen by copying than by coincidence, it is likely that Nirvana have a good claim here.

Third, acting fast is important. Nirvana have acted with speed by issuing proceedings against Marc Jacobs International within a couple of months of the allegedly infringing items being put on the market. This is important because, in some cases, sitting on your rights can mean losing your rights, if the alleged infringer successful construes your inaction as an implied acceptance of, acquiescence to, the infringement. It is advisable to put the allegedly infringing party on notice of the alleged infringement by sending a cease and desist letter / letter before action without delay.

Briffa are experts in all aspects of copyright law and practice. If you have any copyright or other intellectual property rights that you would like to discuss, please call 020 7288 6003 or email [email protected] to arrange a free meeting.

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