Introduction
Mattel, Inc., a Delaware company, appealed to the United States district court in California regarding Walking Mountain Productions, a business entity owned by photographer Thomas Forsythe. The plaintiff asked the court to prevent the artist from creating and selling photographs that depict Mattel’s nude Barbie dolls in absurd, inappropriate, and sexualized positions, often with the use of vintage kitchen appliances. Mattel claimed that such pictures infringed the company’s trademarks, trade dress, and copyrights. Thomas Forsythe argued that his artistic approach was utilized to criticize the objectification of women, which had been largely supported by Barbie dolls, promoting consumerist and superficial values.
Procedural History
Los Angeles Federal District Court dismissed Mattel’s first claim on the copyright infringement by Walking Mountain Productions in 1999. The plaintiff’s second appeal for an injunction was ruled out in 2000. In 2001, Mattel asked to issue a subpoena for the Museum of Modern Art in San Francisco to issue documents about Forsythe’s work; however, this application was denied by San Francisco District Court. Eventually, following a motion for summary judgment, the Los Angeles Federal District Court ruled the fair use of Matte’s trademark, trade dress, and copyright by Forsythe.
Issue
The main issue in Mattel Inc v Walking Mountain Productions was whether the defendant infringed on Mattel’s trademark and copyright of Barbie dolls by using them in his artworks. Furthermore, the court faced the problem of identifying whether Forsythe’s use of Barbie dolls for producing images violated the company’s trade dress rights. Finally, another issue involved determining if the defendant’s parodic artworks were subject to dilution or decrease in the public’s perception of Mattel’s dolls.
Rule(s)
- The Copyright Act of 1976, Title 17 of the United States Code, section 107 (Limitations on exclusive rights: Fair use).
- The Trademark Act of 1946, Title 15 of the United States Code, section 1051 (Application for registration; verification).
- The Lanham Act of 1946, Title 15 of the United States Code, section 1125 (False designations of origin, false descriptions, and dilution forbidden).
Application
The court addressed the copyright claim and examined the purpose for Barbie doll use, the nature of the work, and the originality of the created product. Section 107 of Title of the United States Code states that the new product’s effect on the potential market and the original work must be considered. In this regard, the artwork was characterized by a different reason and character, namely, Forsythe produced photographs with the purpose of criticizing female objectification and consumerism culture. The court found that the artist’s parodic work was sufficiently transformative not to be considered an infringement on Mattel’s copyright. Based on the Trademark Act, Forsythe did not infringe any trademark laws due to the widespread use of Barbie dolls in daily life and vocabulary.
The company’s trade dress rights were not violated since the artist used the original product in a fair amount, and its use did not imply Mattel’s sponsorship. As per the Lanham Act, Forsythe’s photographs were not considered subject to dilution due to their non-commercial use. The artist produced parodic work distinct from the original product, which implied that it would not affect the existing and potential markets.
Conclusion
Eventually, the court dismissed Mattel’s claims as it found that the use of Barbie dolls by Walking Mountain Productions did not infringe the plaintiff’s trademarks, trade dress, and copyrights. The results of the Los Angeles and the San Francisco federal district courts were upheld.