In anticipation of Barbie® turning 50 in March this year, I thought we could take a look at some of Barbie’s legal adventures over the years. Because so much has been written on the Bratz dispute we will be focusing on other legal battles. Jump in the Barbie Camper and let’s get the show on the road. First, a little history. Barbie was actually born in 1958, at least according to her driver’s license, I mean trademark registration, which states Barbie was first used on dolls May 9, 1958. I guess Barbie wanted to be a year younger so all the press states she’s turning 50 this year, I think she is really 51. I stopped counting the number of copyright registrations that are in place for “molded dolls” with Barbie in the name; along with the “accessory” Barbie items that are registered. Mattel has covered the bases to protect the Barbie brand intellectual property. Mattel seems to be the defendant as often as it is the plaintiff in varied legal actions from parody to copyright infringement to reverse likelihood of confusion actions.
• PARODY
Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.2002)
In 1997, Aqua, a Danish band, produced the song “Barbie Girl” on the album Aquarium. In the song, one band member impersonates Barbie, singing in a high-pitched, doll-like voice; another band member, calling himself Ken, entices Barbie to "go party." Mattel sued MCA Records for trademark infringement and lost. The court held this was a true parody protected by First Amendment and the song was a commentary "about Barbie and the values . . . she [supposedly] represents." Because the song was about Barbie, "the use of Barbie in the song title clearly is relevant to the underlying work.”
Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003)
Visual artist Thomas Forsythe creates unique works which he believes comment on the illusion of Barbie. Most of Forsythe's photos portray a nude Barbie in danger of being attacked by vintage household appliances. Mattel argued that his photos infringed on their copyrights, trademarks, and trade dress.
The four factors the Court considered in determining if there was a fair use were: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
The Court concluding that photos parodying Barbie by depicting "nude Barbie dolls juxtaposed with vintage kitchen appliances" was a fair use because: (1) his use was parody meant to criticize Barbie, (2) he only copied what was necessary for his purpose, and (3) his photographs could not affect the market demand for Mattel's products or those of its licensees.
Mattel, Inc. v. Pitt, 229 F. Supp. 2d 315 (S.D.N.Y. 2002)
The defendant repainted and/or recostumed Barbie into a customized "Dungeon Doll" with bondage dress and a PVC mask. The Court held the changes were “transformative” and protected under the First Amendment as a parody.
The parody appears to pose no threat to sales of Barbie dolls and does not seem to violate the company's copyright, the judge concluded.
Wednesday -- Part II: Barbie & Copyright Infringement
Thursday -- Part III: Barbie & Trademark/Unfair Competition
Friday -- Part IV: Barbie & Domain Names/Cybersquating/Dilution