Pink Letter Law: How Barbie Has Helped to Shape IP Law in the Courts

Last Saturday, my friends and I practically bounced our way to the movie theatre, joining throngs of pink-clad youngsters to watch the year’s biggest global blockbuster: ‘Barbie.’ Well, Barbie has done it all, honestly. She has not only achieved unparalleled success as a toy, with over a billion units sold worldwide, but now as a movie, amassing an impressive $365 million global opening. She has defied traditional stereotypes by promoting career-focus and self-sufficiency, challenged the motherhood-aspiration notion for young women, and inspired Greta Gerwig’s modern take on the iconic character. However, we often overlook the doll’s profound contributions to the evolution of intellectual property (IP) jurisprudence, from its genesis to its movie adaptation.

The Doll’s Making: A Genesis Rooted in an IP Dispute

The very creation of the Barbie franchise had its roots in an IP dispute. Ruth Handler introduced Barbie (1959) and Ken (1961), inspired by the Lilli doll’s design, going as far as even naming them Barbara and Kenneth, after Lilli Doll’s children. When its owners sued for infringement, Mattel strategically paid $21,600 and settled Mattel Inc v. Greiner and Hausser (2003), acquiring the copyright and patent rights for the doll. Considering Barbie raked in a whopping $1.5 billion in doll sales within FY2022 itself, the $21,600 settlement (now valuing $212,000) was a genius move. It has also helped Mattel establish a successful commercial legacy by obtaining exclusive rights to produce and distribute Barbie and her derivatives and feature Barbie in public performances and media.

Mattel equally protects Barbie’s distinct brand identity, including its name, logo, and slogan, with its trademark. Initially registered in 1959 with a simple pink sans-serif font, the logo underwent five changes before reverting and continuing with the original in 2009. Originally, Mattel secured trademark protection for “Barbie” specifically for dolls, which subsequently extended to other product categories. It currently enjoys a wide range of Barbie-branded merchandise through licensing agreements, including Gap’s Barbie apparel, OPI Barbie nail polish, NYX cosmetics, Xbox controllers, Burger King sauce, Crocs, UNO cards, and more, all infused with the iconic ‘Barbie pink’ (also trademarked!).

Infringement and Barbie: When Establishing Fair Use Was Enough

The doll has been most instrumental in interpreting and applying the “fair use” exception (Section 107 of the Copyright Act) for intellectual property infringement. For instance, the Barbie movie’s release sparked disappointment as Aqua’s iconic song, “Barbie Girl” was noticeably absent from the film’s soundtrack. This omission traces back to a 1997 legal battle where Mattel sued the band, objecting to the song’s lyrics, which referred to Barbie as a “blonde bimbo” and sexualizing her through phrases like “hanky panky.” Aqua claimed the song was intended as a social commentary and not officially endorsed by Mattel. The legal battle between Mattel and MCA Records, the company representing Aqua, dragged on until 2002, with Mattel filing 11 trademark and copyright claims and MCA countering with a defamation claim. Despite Mattel’s efforts, the courts eventually ruled in favor of Aqua in Mattel Inc. v. MCA Records Inc. (2002), declaring “Barbie Girl” a parody protected from infringement claims.

This wasn’t the only time Mattel got offended by how Barbie was represented. In 1999, Utah photographer Tom Forsythe produced a series of images featuring nude Barbie dolls interacting with kitchen appliances in his composition titled “Food Chain Barbie.” The collection included pieces like “Malted Barbie,” where Barbie was depicted atop a malt machine, and “Barbie Enchiladas,” which portrayed four Barbies wrapped in tortillas, covered in salsa, and placed inside a lit oven. Mattel filed a lawsuit for copyright infringement. In Mattel Inc. v. Walking Mountain Productions (2003), the court ruled in favor of the photographer, stating that his work fell under “fair use” and was protected by the First Amendment due to its nature as social criticism. The court commented:

“In some of Forsythe’s photos, Barbie is about to be destroyed or harmed by domestic life in the form of kitchen appliances, yet continues displaying her well-known smile, disturbingly oblivious to her predicament. It is not difficult to see the commentary that Forsythe intended or the harm that he perceived in Barbie’s influence on gender roles and the position of women in society.”

In Mattel, Inc. v. Pitt (2002), Susanne Pitt re-painted and re-costumed a Barbie doll in a bondage dress to be sold as the “Dungeon Doll.” Mattel sought an injunction against Pitt for infringement. Pitt was granted the fair use defense because her dolls were profoundly transformative, not mere replicas of the original. The judge explained: “A different analysis would apply… if [Pitt] had, for example, dressed Barbie dolls in a different style of cheerleader outfit than those marketed by Mattel. To the Court’s knowledge, there is no Mattel line of ‘S&M’ Barbie’”

However, it has not been all losses for Mattel. The company won against an adult entertainment website using the domain name “barbiesplaypen.com” in Mattel Inc. v. Internet Dimensions Inc. (2000). The court ordered the transfer of the domain name to Mattel, commenting: “The Barbie dolls, with their long blond hair and anatomically improbable dimensions are ostensibly intended to portray wholesomeness to young girls. The ‘models’ on the barbiesplaypen.com site, although many have long hair and anatomically improbable dimensions, can in no way be described as engaging in ‘wholesome’ activities.”

The Barbie Identity Crisis: Suing the Infringers

Mattel has been quite proactive in protecting its copyright by going after the deceptively similar Barbie knock-offs, and they’ve had their fair share of wins and losses in the process. In 1991, in response to creating a “Miss America” line of five dolls, Mattel raised concerns that three of the five dolls (Devon, Tonya, and Blair) violated their copyright. Consequently, a shipment of these dolls, imported from China, was detained by U.S. Customs on infringement suspicion. Since they were packed together, the two other dolls, Justine and Raquel, were also held. Mattel was sued by Kenner and the Miss America Organization, seeking a court declaration that the dolls did not infringe Mattel’s copyright and an injunction to prevent Mattel from interfering with the dolls’ importation. However, in Miss America Organization v. Mattel Inc. (1991), the court deemed judicial intervention premature and advised that the matter be handled through the administrative process outlined in Treasury Department regulations. The outcome of Justine’s and Raquel’s fate remains unknown, unfortunately.

Furthermore, in celebration of the millennium, the operator of Radio City Music Hall introduced a doll called “Rockettes 2000.” Mattel filed a lawsuit claiming that the Rockette doll copied facial features from two different Barbie dolls. The U.S. District Court for the Southern District of New York ruled that copyright protection did not extend to Barbie’s eyes, nose, and mouth. Nevertheless, the U.S. Court of Appeals for the Second Circuit disagreed in Mattel Inc. v. Goldberger Doll Manufacturing Co. (2004), emphasizing that achieving an accurate and distinct facial expression is vital for success in the competitive billion-dollar doll industry. However, the court failed to determine whether the Rockette doll was indeed copied from Barbie.

Barbie v. Bratz: When Secrets Got Leaked

In 2004, Mattel locked itself in a heated legal feud with MGA Entertainment, the creators of Bratz dolls, which claimed to have taken a fresh take on the classic Barbie. Mattel alleged that a former employee conceptualized the Bratz dolls while working for them. This claim led to a trial victory for Mattel in 2008, with the jury awarding it $1 million, citing misappropriation of trade secrets. However, the tides turned during the retrial, as the jury ruled in favor of MGA in Mattel v MGA Entertainment (2010), dismissing Mattel’s accusations since MGA counter-claimed that Mattel resorted to underhanded tactics by employing individuals with fraudulent business cards to gather confidential information about MGA’s unreleased products and marketing strategies at trade shows, subsequently stealing their trade secrets. MGA was awarded $88 million in damages.

The legal battle’s outcome serves as a poignant reminder of the exorbitant costs (each party having spent well over $100 million in legal fees) associated with trade secret misappropriation cases. The outcome highlights the crucial need for employers to proactively identify employee projects, secure confidentiality agreements, and conduct thorough exit interviews to protect their company’s ownership of trade secrets and prevent employees from using them for competing ventures after employment ends.

‘Hi, Barbie!’ When It’s All in a Name

The “Barbie” name in itself has triggered a sleuth of lawsuits. In Mattel Inc. v. Jcom Inc. (1998), the court concluded that the website, using similar shades of pink and font to write “Barbie,” intended to capitalize on Mattel’s goodwill associated with its trademark. Mattel even went international in a 2016 trademark opposition case, opposing the registration of the mark Salon BARBIES for a restaurant before the Japan Patent Office (JPO). Mattel relied on Article 4(1)(xv) of the Trademark Law, which prohibits registration if a mark is likely to be confused with another’s goods or services, and Article 4(1)(xix), which blocks registration if a mark is identical or similar to a well-known mark and is used for unfair purposes. Despite evidence showing the fame and reputation of the Barbie mark, the JPO found that the marks Salon BARBIES and BARBIE were dissimilar visually, phonetically, and conceptually, concluding that there was no likelihood of confusion or association between the services offered under the opposed mark and Mattel’s Barbie brand. The JPO also found no evidence of malicious or fraudulent intent behind the registration, and the Salon BARBIES registration was upheld.

More recently, in Mattel Inc v. Rap Snacks Inc. (2022), Mattel filed a lawsuit against snack maker Rap Snacks Inc. in a Los Angeles federal court, claiming that their Nicki Minaj-branded “Barbie-Que Honey Truffle” potato chips violated Mattel’s trademark rights. Just over a month after filing the complaint, Mattel’s lawyers dropped the dispute and asked the court for a dismissal with prejudice. Rap Snacks has removed the chips from its online store, but the terms of any settlement remain undisclosed. While Nicki Minaj was not a defendant in the case, she has a history of using “Barbie” as part of her persona. While Minaj has faced backlash under poststructuralist and feminist thought for appropriation, she remains in Mattel’s good books, having stayed safely away from any infringement suits and even contributing to the soundtrack of the Barbie movie.

In 2023, Mattel has sued twice. In June 2023, Mattel got a cease-and-desist against a TikTok influencer formerly known as ”Bunny Barbie” for using the name “Barbie” in her handle. Secondly, Mattel sued Burberry Limited in June 2023 against the trademark application for BRBY for its leather goods and clothing brand. In Mattel Inc. v Burberry Limited, Mattel has argued that BRBY is deceptively similar to their well-known trademark, pointing out the phonetic similarities and that consumers might see BRBY as an abbreviation of “Barbie.” The outcome of this dispute will undoubtedly substantially impact both Burberry’s expansion plans and the protection of Barbie’s legacy in the consumer products world.

Impacts Beyond the Barbie World

Intellectual property plays a pivotal role in fostering brand recognition, enabling licensing, and creating barriers to market entry, ultimately enhancing a company’s overall value. Safeguarding innovation and maintaining market dominance in the cross-platform landscape remain critical for companies’ financial success. The Barbie franchise is a prime example of the power of IP ownership in brand protection, product evolution and commercial triumph. IP ownership allows Mattel to leverage emerging technologies like Artificial Intelligence (AI), Virtual reality (VR), and Augmented Reality (AR) to keep Barbie unique and evolving in the rapidly advancing technological landscape. This success is a reminder for companies how timely registration and strategic enforcement of copyrights, trademarks, patents and trade secrets must be their top priority. Hence, Barbie’s influence has extended far beyond the confines of the “Barbie world,” profoundly impacting IP jurisprudence in the ever-evolving “real world.”

Image Source: Deposit Photos
Author: luvemak
Image ID: 267308140