10:24am PT by James Sammataro, John Marcoux
How Far Is Heaven From Nirvana? (Guest Column)
Compare these two T-shirts: Kurt Cobain’s early-'90s NIRVANA design (left) and Marc Jacobs’ recent “Bootleg Redux Grunge” HEAVEN design.
Question: In the lawsuit filed by Nirvana for copyright and trademark infringement, which of the following might be true of Marc Jacobs’ HEAVEN design?
A) Infringes Nirvana’s copyright because it is substantially similar to the protectable original expression of Cobain’s scribble.
B) Does not infringe Nirvana’s copyright either because the NIRVANA scribble is an unprotectable idea or because Marc Jacobs’ design is a transformative fair use.
C) Infringes Nirvana’s trademark because it is likely to confuse consumers into believing that Nirvana endorsed or is otherwise affiliated with the HEAVEN design.
D) Does not infringe Nirvana’s trademark because it is a parody that mitigates the likelihood of confusion among consumers.
This side-by-side visual comparison elicits knee-jerk verdicts such as “complete rip-off!” While the visualization is simple, the law is complex — so much so, that all choices A-D might prove true. Here’s why.
Cobain’s simple scribble NIRVANA design is likely to be found copyrightable because it is an original work of authorship fixed in a tangible form of expression. The quantity of originality needed to secure copyright protection is modest — “a dash of it will do” as any creative spark in selection, combination or expression, no matter how crude, humble or obvious will be sufficient.” Cobain’s smiley face is akin to a modern-day emoji and “[e]ven simple emojis, such as most face emojis, are probably copyrightable.” Although not the first to use the idea of XX eyes, a protruding tongue or a combination of XX eyes and protruding tongue, Cobain’s particular expression of these elements in combination with the warped head and wobbly lips in yellow against black seemingly possesses the minimal creativity required by law. And, it is also possible that the finder of fact would deem Marc Jacobs’ HEAVEN design substantially similar to and infringing upon the protectable expression of the NIRVANA design. So, answer A might be true.
But Marc Jacobs might avoid copyright infringement liability, having moved to dismiss the copyright claim with arguments, both substantive (questioning which of the design elements are protectable, as well as which protectable elements have been copied) and technical (questioning whether the differing dates of alleged creation invalidate Nirvana’s copyright, as well as wether Nirvana L.L.C. actually owns the copyright). The court may find that Cobain’s scribble amounts to nothing more than an idea (uncopyrightable), as opposed to an expression of idea (copyrightable). Nirvana’s copyright infringement claim would thus be barred under the idea/merger doctrine. Blehm v. Jacobs is illustrative. There, the court held that the stick figure images on the left expressed mere ideas (i.e., catching a Frisbee; flashing the peace sign; X-raying a torso) that were unprotectable and could not be infringed by the images on the right:
This same doctrine also applies to literal (not visual) unprotectable ideas. Consider the litigation over dueling T-shirt slogans written in childish lettering: “Someone Went to Boston and Got Me This Shirt Because They Love Me Very Much” vs. “Someone Who Loves Me Very Much Went to Boston and Got Me This T-Shirt.” The First Circuit affirmed non-infringement, citing the idea/merger doctrine. “Obviously, there is a good deal of similarity in the substance of the two competing phrases … [b]ut most of the similarity rests on the fact that both phrases are seeking to express basically the same idea.” With this in mind, how much of the similarity between the NIRVANA/HEAVEN T-shirts is attributed to expressing the same, unprotectable idea? The more similarity you attribute to the idea (a zonked-out smiley face) and not “specific expressive elements” of that idea, the more likely answer B might be true.
Even if the court finds Marc Jacobs copied protectable expression from the NIRVANA design, Marc Jacobs might still prevail with the most potent of copyright infringement defenses, fair use. When the copying is creative and transformative and advances the arts more than it exploits the first author, the copying is said to be fair. A fair use inquiry considers four factors which, when weighed here, do not reveal a clear winner. The “purpose and character of” factor does not appear to favor either party. Marc Jacobs’ use is obviously commercial (and, thus, not a favored use such as scholarship, research, education, criticism or comment); however, the changing of the eyes from XX to MJ is arguably “transformative” and could constitute a visual commentary. The “nature of the copyrighted work” factor focuses upon the degree of creativity of the copyrighted work. Original, imaginative works lie closer to the core of intended copyright protection and, thus, receive greater protection than mostly factual works. Because the NIRVANA design is an entertaining scribble, not a fact, this second factor favors Nirvana. “The amount and substantiality of the portion taken” factor surveys the quantity and quality of the taking. Because the designs are virtually similar and the HEAVEN design arguably borrows the “heart” of the NIRVANA design, the third factor favors Nirvana. “The effect of the use upon the potential market” factor considers how Marc Jacob’s use of the copyright on T-shirts may harm the potential market for NIRVANA design on T-shirts and related apparel. The NIRVANA design sells in mass-market outlets such as Target for the relatively inexpensive $12.99; while the HEAVEN design sells in high-end retail outlets such as Neiman Marcus for an expensive ?110 — approximately 10 times more than the NIRVANA design. The starkly different price points suggests that HEAVEN T-Shirts are not going to usurp the market for NIRVANA T-shirts. So, this fourth factor arguably leans into Marc Jacobs’ favor.
Sometimes, what constitutes a legal “fair use” does not feel like fair use, and can turn on the wildcard fifth factor, the subjective assessment of the randomly assigned judge or jury. Consider the copyrighted work in Cariou v. Prince:
Even though three of the four fair use factors strongly favor the copyright owner of the original photograph (left), Richard Prince’s painting of blue lozenge/air guitar (right) was found to have created new aesthetics with differing creative and communicative results to constitute a fair use. In the NIRVANA/HEAVEN dispute, only two of the factors favor the copyright owner of the original design. So, let’s zoom the microscope in another magnitude and take a closer look at the side-by-side T-shirt designs. Cobain’s scribble is composed of only a few details. In such simplistic works, the copyright protection is thinner and “minor variations” are generally enough for subsequent designs to avoid infringement claims. Marc Jacobs has argued that the HEAVEN design contains more than minor variations. This could prove to be the critical issue: Is the change of eyes from XX to MJ enough to be transformative and avoid the copyright infringement claim? If the eyes are the windows to the soul, then the HEAVEN design’s eye change arguably transformed the soul of the NIRVANA design. Feels like a stretch, but not completely out of the realm of possibility given Prince’s past success. So, again, answer B might be true.
Just as Nirvana’s copyright claim presents a multitude of possible fates, Nirvana’s trademark claim has variable strengths and weaknesses, too.
Nirvana only just applied to register the NIRVANA design mark with the U.S. Trademark Office in January. An earlier registration would have provided Nirvana with decisive litigation advantages, including a presumption of trademark validity and, given the mark’s continuous use, incontestability status. Instead, Nirvana alleges common law rights to the mark. Although those common law rights appear strong (a quarter century of continuous use in the mass market has made the NIRVANA design nearly synonymous with the band and the grunge era), Marc Jacobs has attacked the validity of Nirvana’s trademark rights.
Assuming Nirvana possesses a valid trademark, the issue will be whether the average consumer is likely to confuse the HEAVEN design with the NIRVANA mark. Eight factors control the analysis. The competing T-shirt designs are not to be compared side-by side, but instead as would occur in the marketplace, by an average purchaser who possesses a general, rather than specific, impression of trademarks. The eight factors are each to be weighed, are non-exhaustive, and are not part of a rigid formula to assess likelihood of confusion. Here’s a simplified analysis:
Strength of the mark [+ Nirvana, because the mark is indisputably distinctive and possesses a pedigree of commercial success];
Degree of similarity between the two marks [+ Nirvana, because Nirvana easily wins the “look and feel” test with overall design, shapes, colors and similar Onyx font];
Proximity of the products [+ Marc Jacobs, because Neiman Marcus is a different channel of commerce than Target];
Likelihood that prior owner would bridge the market gap [+ Marc Jacobs, because Nirvana presents anti-materialistic grunge wear that would appear incompatible with posh fashion shopping and, after 25 years, Nirvana has not crossed the theoretical bridge];
Actual confusion [presently a draw, as we do not know the actual evidence yet; however, Nirvana will likely muster a survey indicating that consumers believed that Nirvana must have approved the HEAVEN T-shirt];
Intent [+ Nirvana, because Marc Jacobs brazenly trumpets its intent — to make money off the NIRVANA design — in a parade of marketing ploys to evoke the Nirvana brand];
Quality of product [+ Marc Jacobs, because if he is selling lower or same-quality shirts for that much money, then there is no hope for this world]; and
Sophistication of consumer [+ Marc Jacobs, because consumers in the market for ?110 T-shirts are either sophisticated or too wealthy to be seen in public complaining of being unsophisticated].
There’s arguably enough pull on both sides to present a tug-of-war stalemate on the issue of likelihood of confusion. So, the Marc Jacobs design might be found infringing of the NIRVANA design mark and the answer C may be true.
But take a look at the blatant, almost gleeful way Marc Jacobs has evoked Nirvana’s overall brand in its promotion of the HEAVEN design, including the use of Nirvana’s iconic “smells like teen spirit” lyric and the naming of the fashion series as “bootleg redux grunge.” The motion to dismiss insists that Marc Jacobs’ 1993 Spring/Summer “Grunge” collection entitles the fashion house to claim the grunge mantle in the marketplace. If dismissal is not granted, Marc Jacobs is likely to go all-in on a parody/satire defense. While not absolute (as it is with a copyright claim), a parody defense influences the way in which the eight likelihood of confusion factors are applied.
To be construed as a parody, the HEAVEN design “must convey two simultaneous — and contradictory — messages: that it is the original, but that it is not the original and instead a parody.” In real world applications, Lardashe jeans successfully parodied Jordache jeans, and Chewy Vuiton dog chew toys successfully parodied Louis Vuitton luxury handbags, but HEI5MAN and HE.IS.the.MAN failed to clearly parody HEISMAN because the packaging gave a strong impression of being officially licensed. Did Marc Jacobs’ HEAVEN design successfully parody the NIRVANA design? Can it be found to convey the simultaneous, contradictory messages? It definitely conveys that is the original, but does it sufficiently convey that it is not the original? Maybe. This may be the critical issue. Winning parody tends to be unmistakably parodic. As the court said of the successful parody defense of the Chewy Vuiton mark: “The dog toy irreverently presents haute couture as an object for casual canine destruction.” Is the HEAVEN design succeeding as a parody like this, or is too nuanced? A finding that it is a parody might tilt the likelihood of confusion analysis in Marc Jacobs’ favor. So, the answer D may be true, too!
To answer the question posed by the title of this article: Heaven and Nirvana are close enough to spark spirited legal debates, but perhaps not far enough for the comfort of Marc Jacobs’ lawyers.
James G. Sammataro is the national head of Stroock & Stroock & Lavan LLP Entertainment Litigation Practice Group and managing partner of its Miami office. John Marcoux is a contract attorney for Stroock.