The X-Eye Smiley Face Legal War Is Not Helping Anyone To Reach Nirvana

In the movie Forrest Gump, Forrest, while on a cross-country run, creates the ubiquitous yellow and black smiley face by rubbing his muddy face on a yellow t-shirt.  As he hands the muddy t-shirt back to the person who had handed it to him, he says “Have a nice day.”  And at least in movie-lore that was how the smiley face was born.  In real life, things would have been far more complicated, with disputes and legal battles over ownership of the design and the revenue it generates, much like a current battle over a variant of the familiar smiley face design.

The band Nirvana and fashion designer Marc Jacobs are embroiled in a court battle relating to Marc Jacobs’ use of the X-Eye Smiley Face design long used by Nirvana:

Nirvana’s earliest known use of the X-Eye Smiley Face was on an invitation to a September 13, 1991, party hosted by Nirvana and Geffen Records to celebrate the release of Nevermind, Nirvana’s first major record label album.  The X-Eye Smiley Face, which, according to court filings by Nirvana, was created by Nirvana front man Kurt Cobain in approximately 1991, has been with the band ever since the release of Nevermind. Nirvana eventually obtained a copyright registration for a t-shirt with the Nirvana name and the X-Eye Smiley Face on the front and a slogan on the back.

In 2018, Marc Jacobs released his “Bootleg Redux Grunge” collection, celebrating the 25th anniversary of his “Grunge” collection.  Included in the “Bootleg Redux Grunge” collection was the following items:

All of the items feature the word “Heaven” above a smiley face with the letters M and J for eyes, instead of Xes.

Not surprisingly, Nirvana L.L.C. (the successor to Nirvana Inc., whose principals were the surviving members of the band and Mr. Cobain’s family) sued Marc Jacobs on December 28, 2018, raising claims of copyright and trademark infringement and unfair competition.[1]  Marc Jacobs promptly moved to dismiss the complaint, and the court denied the motion, reasoning that the issues raised in the motion were better suited to a motion for summary judgment or trial.  In the order denying the motion, however, the court noted that allegations in the motion regarding the chain of title to the X-Eye Smiley Face warranted prompt discovery, and Nirvana’s attorneys represented that they would not need much time to produce evidence supporting their position.  Subsequently the court issued an order focused on the chain of title issue; among other things, the order permitted Marc Jacobs to take limited depositions of Dave Grohl and Krist Novoselic, the two surviving members of Nirvana, Courtney Love (Mr. Cobain’s wife) and Frances Bean Cobain (Mr. Cobain’s daughter) regarding the transfer of ownership to Nirvana.

Despite Nirvana’s insistence that the band’s prior attorney and managers were more likely to have information, Marc Jacobs deposed Mr. Grohl and Mr. Novoselic, both of whom testified that they did not know who designed the X-Eye Smiley Face.  In an effort to moot any question over the ownership of the X-Eye Smiley Face, Nirvana subsequently provided Marc Jacobs with an acknowledgement signed by Mr. Grohl, Mr. Novoselic, Ms. Love and Ms. Cobain stating that Mr. Cobain created the X-Eye Smiley Face in 1991, that all rights and the associated goodwill in the “Smiley Face” have always been owned by Nirvana, Inc. or Nirvana, L.L.C., and that Nirvana L.L.C. now owns all rights to the X-Eye Smiley Face.  The case nevertheless continued.

On September 13, 2020, a new party entered the fray.  Robert Fisher, Art Director at Geffen Records in 1991, filed a motion to intervene in the case, claiming that he may have a pecuniary interest in its outcome.  The basis for that interest?  That he is the creator and owner of the X-Eye Smiley Face.  In papers filed with the court, Mr. Fisher claims that he came up with the X-Eye Smiley Face in 1991 when he was working on various projects for Nirvana, including the cover of Nevermind (although according to Mr. Fisher, the creation of the X-Eye Smiley Face was not part of his job at Geffen, and he was not employed by the band or its managers, so he is the owner of the design).

While Marc Jacobs has not objected to Mr. Fisher participating in the case (and has even marshalled Mr. Fisher’s allegations in support of its own motion for summary judgment), Nirvana has opposed the motion and has filed a separate lawsuit against Mr. Fisher,[2] asking the court to issue a declaration that Mr. Fisher has no ownership rights in the X-Eye Smiley Face.  In that case, Nirvana points out that Mr. Fisher has not contested its ownership of the X-Eye Smiley Face for nearly twenty-nine years, and that even if he did create it, the X-Eye Smiley Face was created within the scope of his employment and thus whatever rights he had were owned by Geffen Records, as his employer; According to Nirvana, since Geffen has granted Nirvana whatever rights it may have in the X-Eye Smiley Face and has acknowledged that Nirvana is the owner of the design, Mr. Fisher cannot own it.

Whether Mr. Fisher can intervene in the Marc Jacobs case, and the summary judgment motions filed by Marc Jacobs and Nirvana, will not be resolved until next spring, at the earliest.  In the meantime, as things currently stand Mr. Fisher will have to respond to Nirvana’s lawsuit in early January.  At this point, neither Nirvana, Marc Jacobs nor Mr. Fisher have anything to smile about.

Regardless of who created the X-Eye Smiley Face, at the time it was created no one was thinking that it would be as important or as valuable as it has become.  What this case teaches businesses of all types is that no matter who creates something for your business, it is important to have them sign something confirming that the business, and not the creator, owns all rights to the creation.  Otherwise, the business runs the risk of a lengthy legal battle like the one described above—a legal battle that is still a long way from being resolved.






[1] Nirvana L.L.C. v. Marc Jacobs Int’l L.L.C. et al., 18-cv-10743-JAK-SKx (C.D. Cal. 2018).

[2] Nirvana L.L.C. v. Fisher, 20-cv-10324-JAK-SKx (C.D. Cal. 2020).