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Nirvana V. Marc Jacobs

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Nirvana V. Marc Jacobs APRIL 2019 DEVOTED TO LEADERS IN THE INTELLECTUAL PROPERTY AND ENTERTAINMENT COMMUNITY VOLUME 39 NUMBER 4 THE LicensingJournal Edited by Gregory J. Battersby and Charles W. Grimes Fashion Licensing licensed for use “on literally doz- ens of different t-shirt, shirts, hats, Bita Kianian and Ian W. Gillies hoodies, bags, backpacks, glasses, wallets, and other items of mer- chandise.” To support the claim that the two designs are substan- No Apologies: now collaborate to protect the tially similar, Nirvana provided Nirvana legacy. the following visual comparison Nirvana v. Marc of their licensed merchandise and Jacobs pieces from the Jacobs’ collection. Nirvana’s complaint further On December 28, 2018, alleges that due to the extensive Nirvana LLC filed a lawsuit use of their design on licensed against designer Marc Jacobs in merchandise, the design has the Central District of California, come “to symbolize the goodwill alleging copyright and trademark associated with Nirvana,” and has infringement. Nirvana LLC v. Marc given rise to both copyright and Jacobs International, LLC, et al., trademark rights because con- 2:18-cv-10743 (C.D.Cal). Nirvana sumers viewing goods that bear LLC is the legal entity which con- the smiley face will assume those trols the band Nirvana’s finan- goods are endorsed by or associ- cial, legal, and business affairs. ated with Nirvana. Additionally, Nirvana LLC was formed in Jacobs’ use of his design is September 1997 by the band’s two claimed by Nirvana to be “part surviving members, Dave Grohl Allegations of a wider campaign” by Jacobs and Krist Novoselic, along with to “evoke Nirvana in the minds the Cobain Estate, controlled by behind Nirvana’s of [consumers]” and associate the Courtney Love. The lawsuit was Complaint entire collection with “one of the triggered by Jacobs’ new “Bootleg founders of the ‘Grunge’ musical Redux Grunge” Collection, and In its complaint, Nirvana genre, so as to make the ‘Grunge’ alleges infringement of Nirvana’s alleges that Jacobs’ “Bootleg association with the collection satirical smiley face design, cre- Redux Grunge” collection features more authentic.” ated by Nirvana front man Kurt designs bearing a resemblance Cobain in 1991. The design was to the infamous Nirvana smi- first introduced in 1992 and has ley face design. Nirvana further Financial Burdens since been licensed for use on alleges that unlike the authorized numerous items, often appear- Nirvana clothing found at retail- of Unlicensed ing in yellow against a black ers such as Hot Topic, Target, and Merchandise background. Urban Outfitters, the items avail- This is not the first time able from Jacobs’ collection are Unlicensed use of a band’s Nirvana has made headlines due not licensed by Nirvana. trademark or copyrighted work to legal disputes. After Cobain’s In addition to its music royal- on merchandise can be finan- passing, Love was publicly at ties, Nirvana has earned a steady cially detrimental and substan- odds with Grohl and Novoselic revenue stream from licensing tial, especially for a dissolved for nearly two decades. Love merchandise. In its complaint, band like Nirvana that no longer sued the band members in 2001 Nirvana claims to have used the performs live or composes new to dissolve Nirvana LLC and gain smiley design continuously since music. Even for active bands that control over the band’s affairs. 1992 to identify its music and continue to tour and release new The band members counter- licensed merchandise. The first records, merchandise licensing sued in an attempt to remove use of the design appeared on can be a significant percentage of Love from the LLC. Love, Grohl, a poster advertising the release their income. According to Bob and Novoselic appear to have party for Nirvana’s Nevermind McLynn, the manager for rock put their differences aside and album. Since then, it has been band Panic! At the Disco, 30% of APRIL 2019 The Licensing Journal 1 the profits earned from the band’s international music merchandise february-2018/rise-in-music- most recent tour were attribut- sales hit $3.1 billion total, a near merch-means-opportunity-for- able to the sale of merchandise. 10% increase from the previous promo-industry/). Music has (See https://www.rollingstone. year. (See https://www.billboard. become an increasingly digital com/music/music-features/inside- com/articles/business/7801357/ experience for consumers, and musics-merch-gold-rush-199554/). global-music-merch-biz-grew-to- musicians are recognizing that A recent global licensing survey 31-billion-in-2016-study; https:// fans desire something physical released by the Licensing Industry www.licensing.org/research/ to connect themselves with the Merchandisers Association licensing-survey/; https://www.asi- music they love. Bands have been (LIMA) found that in 2016, central.com/news/web-exclusive/ largely addressing this market 2 The Licensing Journal APRIL 2019 through additional merchandis- his Perry Ellis grunge collec- CA, uses his former career ing. For example, three years ago tion” and their response was to as an engineer, inventor, and rock band Fall Out Boy opened a burn it because “[they] didn’t like professional musician to bring pop-up shop in New York dedi- that kind of thing.” (See WWD a unique perspective in rep- cated to selling the band’s mer- article at: https://wwd.com/eye/ resenting similarly minded chandise, to great success. Rap people/courtney-love-on-birkins- creative and inventive clients. musicians Kanye West and Drake and-sex-3189035/). This previ- His practice includes procure- have followed suit, opening pop- ous history or any number of ment of patents, trademarks, up shops of their own that have unknown factors might have and copyrights for his clients. been reported to earn $1 million placed “Something in the Way” of He provides counsel and due in revenue (See https://www.vogue. the parties from otherwise reach- diligence related to intellectual com/article/bravado-ceo-mat- ing an amenable agreement, lead- property licensing, registrability, vlasic-interview-kanye-west-pop- ing to the present lawsuit. acquisition, and infringement up-shops). Immediately prior to publica- risk. This lawsuit comes over 25 tion, Marc Jacobs filed a Motion years after Jacobs showcased to Dismiss alleging, among other Bita Kianian is an associate his original Grunge collection things, failure to allege copyright with Knobbe Martens in Orange in 1993. The original collection ownership, copyright invalidity, Country, CA. Before joining the was not well-received by the gen- lack of similarity between the firm, Mrs. Kianian worked as eral public and was rumored to disputed artwork, and copyright a production engineer for local have cost Jacobs his position at preemption of the non-copyright Southern California artists and design house Perry Ellis. The claims. The disputed “Bootleg designers. Her experience led original collection was likewise Redux Grunge” collection items her to law school fueled with a not well-received by Cobain and are still offered for sale on the passion for helping creators and Love, according to some reports. Marc Jacobs website and other inventors protect their work. Her Love was quoted in an inter- online retailers. practice includes the procure- view with Women’s Wear Daily ment and enforcement of trade- as stating that “Marc [Jacobs] Ian Gillies, a partner with marks and copyrights for her sent [Love] and Kurt [Cobain] Knobbe Martens in San Diego, clients. Copyright © 2019 CCH Incorporated. All Rights Reserved. Reprinted from The Licensing Journal, April 2019, Volume 39, Number 4, pages 18–20, with permission from Wolters Kluwer, New York, NY, 1-800-638-8437, www.WoltersKluwerLR.com APRIL 2019 The Licensing Journal 3.
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