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January 2004
(Issue No. 1: Decisions published Dec. 16-31)
Artist's Photos Of BARBIE Dolls Are Protected Fair Use
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Mattel, Inc. et al. v. Walking Mt. Productions, et al.
(9th Cir. Dec. 29, 2003) 2003 U.S. App. LEXIS 26294
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 Court Opinion
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 Case Snapshot:
| Trademark Issue: |
 Fair Use
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| Case Overview: |
Mattel sued an artist and his company for, inter alia, copyright and trademark infringement based on the artist's use of BARBIE dolls in a series of photographs depicting them in various unflattering poses, and use of the BARBIE mark in connection with the photo series. Mattel appeals the district court's order granting summary judgment for Defendants.
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| Holdings: |
Use of the BARBIE mark in the photo titles does not infringe because the mark has artistic relevance to Defendants' photos depicting the dolls, which are works of artistic expression protected by the First Amendment.
Use of BARBIE trade dress in the photos is nominative fair use which precludes Plaintiff's trade dress claims.
The "Food Chain Barbie" photos are parodies, and thus the dilution claims fail because parodies are non-commercial uses which are not actionable.
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| The Dispute: |
The photos in dispute:
Defendant Thomas Forsythe, aka "Walking Mountain Productions," produces photographs with social and political overtones. In 1997, Forsythe developed and began selling a series of 78 photographs entitled "Food Chain Barbie," in which he depicted Barbie in various absurd and often sexualized positions. He used the word "Barbie" in some of the titles.
Forsythe generally depicts nude Barbie dolls posed with various vintage kitchen appliances. For example, "Malted Barbie" features a nude Barbie placed on a vintage malted machine. "Fondue a la Barbie" depicts Barbie heads in a fondue pot. "Barbie Enchiladas" depicts four Barbie dolls wrapped in tortillas and covered with salsa in a casserole dish in a lit oven.
Plaintiff is Defendants' biggest customer: The "Food Chain Barbie" series earned Forsythe total gross income of $3,659. Purchases by Mattel's investigators comprised at least half of Forsythe's total sales.
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| Procedural Posture: |
Plaintiff's appeal of order granting Defendant's Motion for Summary Judgment (United States District Court for the Central District of California, Ronald S.W. Lew, District Judge, Presiding)
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| Ruling: |
Affirmed
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Key Points:
Fair Use
 Defendants' use of the BARBIE mark in the photo titles does not infringe because the mark has artistic relevance to Defendants' photos depicting the dolls, which are works of artistic expression protected by the First Amendment.
- Test for use of a trademark in titles of works of artistic expression: The Ninth Circuit has adopted the Second Circuit's test in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). The Rogers balancing test prohibits application of the Lanham Act to titles of artistic works unless the title "has no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Id.
- Defendants' use of the mark satisfies the test: Forsythe's use of the Barbie mark is clearly relevant to his work. The Barbie mark in the titles of Forsythe's works and on his website accurately describe the subject of the photographs, which in turn, depict Barbie and target the doll with Forsythe's parodic message.
 Accordingly, the public interest in free and artistic expression greatly outweighs its interest in potential consumer confusion about Mattel's sponsorship of Forsythe's works.  [p. 37]
Defendants' use of BARBIE dolls in the photos is nominative fair use which precludes Plaintiff's trade dress claim.
- Defendants' use satisfies the test for nominative fair use:
- Barbie would not be readily identifiable in a photographic work without use of the Barbie likeness and figure.
- Forsythe used only so much as was necessary to make his parodic use of Barbie readily identifiable.
- It is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated with his work. Any reasonable consumer would realize the critical nature of this work and its lack of affiliation with Mattel. Critical works are much less likely to have a perceived affiliation with the original work.
The district court's grant of summary judgment to Forsythe on Mattel's trade dress infringement claim was, therefore, proper.
[pp. 47-48]
The dilution claims fail because Defendants' photos are parodies, which are non-actionable non-commercial use of Plaintiff's mark and trade dress.
- Parody is a form of noncommercial expression if it does more than propose a commercial transaction.
- Forsythe's artistic and parodic work is considered noncommercial speech and, therefore, not subject to a trademark dilution claim.
We reject Mattel's Lanham Act claims and affirm the district court's grant of summary judgment in favor of Forsythe. Mattel cannot use 'trademark laws to . . . censor all parodies or satires which use [its] name' or dress. New Kids on the Block, 971 F.2d at 309.
[p. 49]
Copyright Claim
Use of Barbie dolls in the photos is protected fair use.
Analysis
This is yet another in a series of cases Mattel has brought against artistic works featuring Barbie dolls.
- For example, in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003), the Ninth Circuit previously rejected Matel's claims based on a song entitled "Barbie Girl" that contained lyrics that parodied and mocked Barbie.
More than just a mark – a cultural icon.
- It is especially difficult to overcome a parody defense when a product and its associated marks have become cultural icons. As the court noted:
As we recently recognized in MCA, however, when marks 'transcend their identifying purpose' and 'enter public discourse and become an integral part of our vocabulary,' they 'assume[ ] a role outside the bounds of trademark law.' 296 F.3d at 900. Where a mark assumes such cultural significance, First Amendment protections come into play. Id. In these situations, 'the trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function." Id. See also New Kids on the Block v. News Am. Publ'g Inc., 971 F.2d 302, 307 (9th Cir. 1992). [p. 35]
The artist's statement about the case shows the cost of "free" speech:
- FOOD CHAIN BARBIE AND THE FIGHT FOR FREE SPEECH
"You’ve been served". When a Sheriff says this while handing you a sheaf of very official papers, those words carry a whole different meaning than when you hear them at your favorite restaurant. On August 24, 1999 I was served with a 30 some page complaint from Mattel for copyright and trademark infringement. That was the beginning of a new menu for my ‘Food Chain Barbie’ photography project.
In the face of this Federal lawsuit, I knew I had to fight back. My work is obviously ‘fair use’ - political and social criticism presented with humor and parody. I wasn’t going to let a corporation known for selling an impossible beauty myth to so many generations of children get away with censoring my work. I spent the next five months in a desperate search for legal representation. I discovered that arts organizations were woefully ill equipped for the task. Various ‘lawyers for the arts’ groups are designed for simple matters - how to write a licensing agreement - but not for the daunting task of serious litigation.
A long list of attorneys suggested that I just give up, since I hadn’t made any money anyway. They were so locked into economics that they never even considered the principle. To my mind, this was an essential fight. Free speech is paramount to our free society. At the most I was risking bankruptcy, hardly a grave risk compared to the risk of life and limb taken by freedom fighters before me in this country and still today in more overtly oppressive countries around the world.
I eventually persuaded the ACLU of Southern California to take up my case. They recognized that in this increasingly brand conscious world, it’s the corporations that exercise the real censorship power over free speech. Corporations make their brands ubiquitous and then complain if anyone uses the brands to criticize the resulting crass consumerism. Unlike a public figure like New York Mayor Giuliani, corporations proceed quietly, below the radar of public scrutiny, merely by making a business decision to throw their intimidating wealth in the face of hapless artists. It’s almost an Orwellian double bind that our culture is so sensitized to official censorship that the very real censorship by the truly invidious goes unnoticed and unchecked.
Even the ACLU only recently became sensitive to the power of private censorship. Lacking expertise in Intellectual Property law, they needed to find a private firm to do the lion’s share of the legal work. That’s where Howard, Rice, Nemerovsky, Canady, Falk & Rabkin come in. This San Francisco based firm has done pro bono legal work in excess of $1.5 million in defense of my case. While the legal work is pro bono, the expenses are still my responsibility. So far they’ve exceeded $200,000. That’s why all proceeds of sales from the Food Chain Barbie series go to support the Creative Freedom Defense Fund.
From what I’ve learned in the course of defending my very basic free speech rights, this is a fairly standard cost of fighting a legal battle in federal court. It only confirms what I’ve always sensed, that the legal system is little more than a boxing ring for the rich with the common people not even invited to experience the proceedings on pay per view. We may be free to express ourselves, but if that expression involves offending a rapacious corporation, they’re equally free to sue; and unless we have the wherewithal to fight off high powered attorneys, that’s where our free speech ends.
My free speech remains, but so does the fight. After I was granted a summary judgment ruling by the federal court on August 13, 2001, Mattel immediately appealed. Over a year later, the briefs have been filed and it will probably be May of 2003 before an Appeal’s Court ruling. If the court affirms, then Mattel can either seek redress at the Supreme Court - something I’d certainly welcome as appropriately absurd in these meaningless corrupt times - or finally concede defeat.
If the Appeals court decides to send this case back to the trial court for any reason, then the cycle starts pretty much all over again. Every day my costs keeps mounting, while the corporation is secure in knowing that their legal expense is little more than a handful of 30 second spots on some brainwashing television program. Mattel’s lead attorney even boasted that she practices law as ‘deterrence’.
Free speech shouldn’t be about having spare millions, but as long as it costs a fortune to defend obvious free speech rights, then my plea, for myself and for other artists who face unreasonable lawsuits has to at least include a pitch for financial support.
Buy the work because you like it. Know it’s supporting an important battle.
source: http://creativefreedomdefense.org/statement.htm
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