Few of us can claim to have been born a sex toy. The idea for Barbie originated in Germany in the mid-fifties from a pornographic doll called Lilli, based on a racy comic strip character and sold as a gag gift for men. Lilli was a gold-digging prostitute.
Barbie’s creator Ruth Handler probably never realized the global success Mattel would reach with the evolution of Barbie. Ruth would also likely have never anticipated Barbie’s success to develop so pervasively in society that everyone from artists to web developers would attempt to use Barbie’s good name for their own economic or artistic use. In a recent decision, the U.S. Ninth Circuit Court of Appeals ruled an artist’s photographs, entitled “Food Chain Barbie,” was so clearly a parody that Mattel’s copyright infringement claims were “objectively unreasonable and frivolous in light of the fair use exception.” Mattel, Inc. v. Forsythe, 2004 U.S. Dist. LEXIS 12469 (C.D. Cal. June 24, 2004). The artist, Tom Forsythe, lauded the case as setting “a new standard for the ability to critique brands that are pervasive.” He is not alone. Mattel has a history of over-zealous lawsuits. In fact, there is actually a website dedicated solely to the seemingly endless litigation brought by Mattel in U.S. Federal Court (www.sorehands.com). In Mattel’s defense, there is reason to be displeased by the images. The series portrayed nude Barbie dolls in danger of being attacked by household appliances. For instance, “Fondue for Three” features three Barbie heads in a fondue pot, with all three heads displaying Barbie’s seemingly defenseless, eery “deer-in-headlights” smile.
By examining what it means to copyright and what the defense of fair use entails, the decision by the Ninth Circuit in favor of the artist was an obvious one. Since Mattel owns “Superstar Barbie[‘s] head and parts of the figure including revisions to the hands, feet, neck, shoulder and buttocks,” and Forsythe copied and reproduced the Barbie figure, Mattel established the prima facie case for a copyright infringement claim. Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792 (2003). The “bundle of rights” that entails a copyright include exclusive rights of “reproduction, adaptation, publication, performance, and display.” 17 U.S.C.S. 106. Copyright infringement occurs when any one of those rights is violated. Id. The larger issue for the Ninth Circuit to decide was whether Forsythe’s work constituted “fair use.” The four broad factors used to determine fair use are: (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 copy-righted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Mattel Inc., 353 F.3d 792, citing Dr. Seuss Enters., L.P. v. Penguin Books USA Inc.,109 F.3d 1394 at 1399-1404 (analyzing and applying 17 U.S.C. Ã?Â§ 107). In the first factor, the court held the work was a parody, defined as “. . . artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule.” Id, quoting American Heritage Dictionary 1317 (3d. 1992). In analyzing whether the artistic work was a parody, the court weighed the fact that “the plastic dolls dressed in various outfits, leading glamorous lifestyles and engaged in exciting activities. To sell its product, Mattel uses associations of beauty, wealth, and glamour.” Id. at 802. The court explains how Forsythe “turns this image on its head, so to speak, by displaying carefully positioned, nude, and sometimes frazzled looking Barbies in often ridiculous and apparently dangerous situations.” Id. With regards to the second factor, the court recognized that Mattel had a “creative work” in Barbie. Although creative works are “closer to the core of copyrighted works than informational and functional works,” this factor has not been “terribly significant” in the balancing test. Id. Mattel argued the third prong, “amount and substantiality,” was particularly significant since Forsythe used the entirety of the Barbie doll in his work, rather than merely photographing the heads. The court reasoned that Forsythe displayed only parts of the Barbie, while other parts were “obscured or omitted depending on the angle at which the photos were taken and whether other objects obstructed a view of the Barbie figure.” Id. at 804. The fourth factor was not met, since the “new work will not affect the market for the original in a way cognizable under this factor” and it is not likely that Mattel would license an artist to be critical of Barbie. Id.
A basic intellectual property theory is that continual, overly aggressive enforcement of IP rights could potentially destroy the free exchange of ideas in a market economy. The court concluded that although Mattel’s design of Barbie is creative in nature, Forsythe’s copying provided no harm to potential derivative uses of the copyrighted work. In fact, the court held “the public benefit in allowing artistic creativity and social criticism to flourish is great.” Mattel Inc., 353 F.3d at 806. In defending Mattel’s allegations, “Forsythe furthered the purposes of the Copyright Act by demarcating more clearly the boundaries of copyright law.” Id.
Not only did the court agree that Forsythe parodied Barbie, but the court surprised both Mattel and the legal community by awarding Forsythe nearly $2 million in legal fees and costs, as permitted in the Copyright Act 17 U.S.C.S. Ã?Â§505. The court looked to the “Lieb factors” in order to guide whether the plaintiff’s copyright claims were consistent with the Copyright Act. These factors include “frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.” Mattel, citing Lieb v. Topstone Industries, Inc., 788 F.2d 151, 156 (3d Cir. 1996). These factors do not require that Mattel had bad faith. Rather, the Lieb factors are an “even-handed approach.” Lieb, 788 F.2d at 12. In the “motivation” analysis of the Lieb factors, the judge in the case held that “[Mattel] had access to sophisticated counsel who could have determined that such a suit was objectively unreasonable and frivolous. . . Instead, it appears [Mattel] forced [Forsythe] into costly litigation. . . This is just the sort of situation in which this court should award attorneys’ fees to deter this type of litigation, which contravenes the intention of the Copyright Act.” Mattel, 2004 U.S. Dist. LEXIS 12469 at 7. In the end, this one artist, with the help of the American Civil Liberties Union, had finally taken down Barbie. Perhaps when the next CEO of a pop cultural iconic symbol like Barbie considers intimidating an artist with a lawsuit, he may ask himself, “is it possible Malibu Barbie could bite back?”