Intellectual property (“IP”) rights are critical to the capitalisation of an invention. Generally, IP rights confer monopoly rights over an idea, granting the owner the exclusive right to profit from it. IP rights are only a powerful instrument, however, where the holder actively enforces them. Mattel Inc., the IP owner of “Barbie” is known for being very proactive in protecting its IP rights, particularly as many have attempted to capitalise on the goodwill of the “Barbie” brand. These disputes have arisen on many occasions and range from concerns regarding the unconventional representation of Barbie to attempts to outright duplicate Barbie’s facial features.
“Food Chain Barbie”
In 1999, Utah-based photographer, Tom Forsythe captured attention with his composition titled “Food Chain Barbie”; a series of daring photographs featuring nude Barbie dolls posed alongside popular kitchen items. In one striking image titled "Malted Barbie," Barbie was positioned provocatively atop a vintage malt machine. In another image, "Barbie Enchiladas," Forsythe displayed four Barbies in a lit oven, wrapped in tortillas, and coated in salsa.
Forsythe claimed his artwork served as a critique to the objectification of women embedded in the “Barbie” branding. Through these thought-provoking images, Forsythe expressed concerns about the implications of Barbie's representation in domestic roles, while she maintained a seemingly oblivious and idealised demeanour.
Unsurprisingly, Mattel did not approve of Forsythe’s artistic portrayal of Barbie. As the copyright owner of the brand, they filed a lawsuit against him alleging copyright infringement. Mattel claimed they were offended by Forsythe’s sadistic representation of their iconic Barbie doll. However, in the proceedings, Forsythe's artistic defence proved successful. The Court ruled in favour of the photographer, declaring that the "fair use" exception applied to his work. The Court specifically acknowledged the intent of Forsythe’s composition, recognising that it was transformative and clearly for parodic purposes. His satirical intention was highlighted through Barbie's continuous smile amid the potential destruction and harm posed by domestic settings.
In 2003, the 9th US Circuit Court of Appeal’s decision in Mattel Inc. v. Walking Mountain Productions affirmed the value of artistic expression as “fair use”, even where strict IP rights are involved. This marked a pivotal moment in the ongoing debate surrounding art, copyright, and freedom of expression.
Barbie goes to Court
As Mattel’s steadfast streak continued, they began pursuing companies who were manufacturing deceptively similar children’s dolls. Radio City Music Hall was just one of those who faced Mattel in this context. In 2000, Radio City introduced their "Rockettes 2000" doll to the market. Unfortunately, their celebration was short-lived. Mattel took legal action against Radio City, insisting that their Rockette doll had replicated facial features from two distinct Barbie dolls: “Neptune’s Daughter Barbie” and “CEO Barbie”. Mattel argued that the similarities between the Rockette doll and the Barbie dolls were uncanny, and as such, amounted to copyright infringement.
With Mattel's dedication to protecting the Barbie brand, it was evident that it was determined to uphold the uniqueness and exclusivity of its iconic doll's design. Yet, in Mattel Inc v Radio City Entertainment (2004), the US District Court for the Southern District of New York held that copyright protection did not extend to Barbie’s eyes, nose, and mouth. Regardless, the case shed light on the importance of safeguarding IP rights and maintaining the exclusiveness of well-established brands like Barbie.
Mattel Inc. was, however, unsatisfied with the District Court’s decision and appealed the judgment. On appeal, in Mattel Inc. v. Goldberger Doll Manufacturing Co. (2004) the 2nd US Circuit Court of Appeals disagreed with the District Court’s decision. They highlighted the importance of Barbie’s unique facial features, including her upturned nose, widely spaced eyes and bow lips, emphasising their originality in the highly competitive doll industry.
Lawsuit Barbie Strikes Again
Mattel's dedication to safeguarding the Barbie trademark has extended to all those attempting to capitalise on the branding. In Mattel Inc. v. Jcom Inc. (1998), Mattel filed a lawsuit to prevent an adult entertainment website from trading under the name “Barbie’s Playhouse”. The Court concluded that writing “Barbie” in a similar shade of pink and font satisfied an intent to profit from Mattel's goodwill.
Soon after, Mattel returned to the Southern District of New York over a similar dispute. In Mattel Inc. v. Internet Dimensions Inc. (2000) Mattel contested use of the domain name "barbiesplaypen.com" for adult entertainment purposes. The Court ruled in favour of Mattel, reasoning that the adult content on the website misrepresented the wholesome image of Barbie.
Susanne Pitt's "Dungeon Doll" provided yet another twist in the Barbie saga. Pitt was capitalising off her “Dungeon Doll’ creation, a Barbie that had been repainted and costumed in a bondage dress, helmet, and mask. Mattel were back in court when they sought an injunction in the Southern District of New York to restrain Pitt, alleging that her repurposed Barbie dolls infringed its copyright works. The Court in Mattel Inc. v. Pitt (2002) denied Mattel's motion for summary judgment on the basis that Pitt's dolls were transformative, meaning they may have been protected under the “fair use” exception.
Despite the unfaltering legal challenges, Barbie's popularity has endured. She has become a favourite among children, as well as an iconic symbol of the toy industry. Mattel's commitment to protecting her brand and maintaining market dominance showcases the importance of intellectual property rights in a fiercely competitive market. As time progresses, Barbie's captivating charm will continue to inspire imaginations and, undoubtedly, keep legal professionals on their toes as they navigate the ever-evolving landscape of intellectual property protection.
The success story of Barbie offers a reminder about the importance of commercialisation and the protection of IP rights. As a business owner or the creator of an idea or invention, you should consider what IP protections you have in place. As Barbie has demonstrated, IP rights form the foundation in modern business. Like physical property, intellectual property is valuable and requires safeguarding. Just as you lock your house, you may want to trademark or patent your creation, or seek advice on what copyright arises by law in different jurisdictions.
Our team of senior commercial lawyers have the expertise to assist with any issues regarding intellectual property for either a product or a service. If this article has prompted any questions or you would like to speak to one of our commercial lawyers to find out how we can help you contact us today on +61 3 9822 8588 or email us HERE.
