After a drawn-out legal battle spanning several years, the famed rock band Nirvana, the fashion giant Marc Jacobs International LLC, and a former record company employee have finally reached a settlement regarding the contentious “smiley face” logo. Nirvana LLC v. Marc Jacobs International LLC et al. (case number 2:18-cv-10743). This agreement was reported in a joint filing in the California federal court on Tuesday.

The case revolves around ownership and merchandising of the iconic smiley face logo. The controversy ignited when high-fashion designer Marc Jacobs started selling shirts featuring a variation of the Nirvana logo. Jacobs’s version retained the bold black-and-yellow color scheme, the wobbly mouth, and the protruding tongue of the original, but swapped “NIRVANA” for “HEAVEN” and replaced the x-eyes with an m-eye and a j-eye, likely referencing his initials. Naturally, Nirvana took legal action to stop what they saw as corporate exploitation of their emblematic logo.

The dispute, litigated in the U.S. District Court for the Central District of California, saw its latest development following a virtual settlement conference in late June. U.S. District Judge John A. Kronstadt has given the parties until August to either file a motion for dismissal or update the court on their settlement progress, pausing all other deadlines in the case.

The roots of this legal saga stretch back to 2018, when Nirvana LLC accused Marc Jacobs of infringing on their intellectual property by using the smiley face on a clothing line called Bootleg Redux Grunge, which bore a striking resemblance to the band’s iconic logo. This logo, Nirvana claims, was created by the late Kurt Cobain and first appeared on a poster for their groundbreaking 1991 album “Nevermind.” Since then, it has been emblazoned on countless T-shirts, posters, and other merchandise.

Marc Jacobs, however, challenged this assertion, arguing that Nirvana could not conclusively prove Cobain’s authorship. Adding another twist to the tale, Robert Fisher stepped into the fray, claiming that he was the true creator of the logo during his tenure at Geffen Records, Nirvana’s label, and that it was not created as part of his employment there.

Judge Kronstadt ruled late last year that if Fisher indeed drew the logo, it was a work for hire for Geffen Records, and if Cobain drew it, then the band owned it, effectively excluding Fisher from the trial. Fisher’s subsequent appeal for a delay in the trial until the Ninth Circuit could hear his case was denied by Judge Kronstadt in May.

The legal teams involved in this high-profile case include Mark Steven Lee of Rimon PC, and Bert H. Deixler and Patrick J. Somers of Kendall Brill & Kelly LLP representing Nirvana, Michael J. Zinna of Kelley Drye & Warren LLP representing Marc Jacobs, and Inge De Bruyn of Modo Law PC representing Fisher.

Ronnie Capaldi, the author of this post, will lead a discussion of these cases at our weekly SoCal IP Institute Meeting on July 15, 2024, which will qualify for 1-hour of MCLE for the State Bar of California and is available via the internet for those who would like to participate.