Fashion designer sued by band for copyright infringement. NIRVANA v. MARK JACOBS

Copyright is a legal protection granted to the creator of a new work of expression. Painters, sculptors, photographers, musicians, authors are all creative occupations whose works can be protected by copyright. Copyright allows creators to prevent other people from copying their works. Frequently creators are inspired by the works of other creators. Drawing inspiration from an earlier work is not considered copyright infringement because copyright law protects the expression of ideas, not the ideas themselves. However there is a fine line between inspiration and imitation. If a new work is substantially similar to a prior work, then copyright infringement may have occurred. Proof of substantial similarity is satisfied by a two part test of extrinsic similarity and intrinsic similarity. The extrinsic test is objective in nature and requires the plaintiff to identify specific criteria which it alleges have been copied. Unprotectable elements such as idea, concepts and elements in the public domain are filtered out of the extrinsic test. The intrinsic test is an examination of an ordinary person’s subjective impression of the similarities between the two works, and is the exclusive province of the jury.

For example, if an artist creates a painting of a tree, the artist only has a copyright to their painting. Other people are free to create their own painting of a tree without infringing on the copyright of the artist. However, if a photographer takes a picture of the artist’s tree painting, the photograph of the painting would infringe on the copyright of the artist. The photograph merely copies the painting with no added value. Therefore the photographer’s picture is a derivative work of the artist’s painting. A derivative work is a work based on or derived from one or more already existing works. Common derivative works include translations, musical arrangements, motion picture versions of literary material or plays, art reproductions, abridgments, and condensations of preexisting works.

If the photographer adds something to the photograph to make it more than just a photograph of a painting, the photographer can gain a copyright to the photograph but only to the degree that the photographer adds some artistic value to the new work. But the artist can still claim that the photograph infringes on the artist’s copyright because copyright is an exclusive right. Copyright does not grant the photographer the right to publish the photograph of the painting, copyright allows the photographer the right to exclude others from publishing the photograph. Because the artist has the copyright to the original work, the painting, the artist can exclude the photographer from publishing the photograph because it is a derivative work.

The photographer can gain a copyright to the photograph which surpasses the copyright the artist has on the painting if the photograph can be shown to be a transformative work. If a work is found to be transformative, then the use of the original copyrighted work is considered fair use, and the transformative work does not infringe upon the copyright of the creator of the original work.

NIRVANA LLC, v. MARK JACOBS INTERNATIONAL, 2:18-cv-10743 (C.D.CA 2018) is a case which demonstrates what can happen when a new work is a little too close to the work that inspired it. The plaintiff in this case is the internationally renownd band Nirvana. The plaintiff owns the copyright to its music and several other pieces of art work. Among the copyrighted works owned by the plaintiff is a “Smiley Face”design and logo, Copyright Registration No. VA0000564166, created by Kurt Cobain in about 1991 and registered for copyright in 1993. The ‘166 copyright is reproduced above on the right. The plaintiff has used that copyrighted design and logo continuously since 1992 to identify its music and licensed merchandise. The ‘166 copyright has licensed for use on dozens of different products.

In November 2018, the defendant released a new clothing collection titled: “Bootleg Redux Grunge”. Included in that collection are items of clothing that feature a drawing which is very similar to the ‘166 copyright. An example of the defendant’s drawing is reproduced above on the left. In December 2018 the plaintiff filed suit against the defendant. The plaintiff claimed that by creating and selling products depicting a substantially similar design to the ‘166 copyrighted “Smiley Face” design, and by reproducing and displaying those images to promote Defendants “Bootleg Redux Gunge” collection, the Defendant violated of Plaintiff’s copyright. The defendant moved to dismiss the complaint on several grounds, including that the two faces are not substantially similar.

The trial court found the defendant’s arguments unpersuasive and denied the motion to dismiss the complaint. With respect to the similarity between the works, the court held that the extrinsic test strongly favors the plaintiff. The idea of a smiley face is not protectable, however, the two smiley face drawings share several similarities. The slightly asymmetrical shape of the face, the wide placement of the eyes, the distinctive squiggle of the mouth and the similar placement of the tongue were all cited as reasons that the two smiley faces were extrinsically similar.

This does not mean that the plaintiff wins the case, merely that the plaintiff has plead a case that can continue to trial. However, the judges comments

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