IP Law in Plastic – It’s Fantastic! A Mattel Masterclass in IP Law
Sharon Givoni Consulting Arts and design, Design Law
IP Law in Plastic – It’s Fantastic! A Mattel Masterclass in IP Law
Overview
Barbie isn’t just a doll; she’s an icon. But have you ever wondered about the legal powerhouse that safeguards the Barbie brand? Join us for a session that promises to be as engaging as it is enlightening, illuminating the corridors of IP law through the sparkling world of Barbie.
Dive into the captivating journey of Barbie, not just as a doll, but as a subject of significant intellectual property (IP) law disputes. Discover the legal adventures Mattel faced to protect the Barbie brand and legacy and see how global lessons are relevant here in Australia. Like her or hate her, Barbie’s legal odyssey offers a treasure trove of learnings.
Why Join?
This webinar isn’t just about a toy. It’s about understanding the nuances of IP law, the significance of safeguarding innovations and the importance of brand protection in the digital age. Learn in an engaging way through the prism of Barbie and Mattel. Our engaging speaker and IP expert Sharon Givoni will ensure that fun stories and anecdotes make the legal concepts stick and offer plenty of opportunities for you to directly engage during the session.
Some of the things covered
The Barbie film has been a huge box office success, demonstrating the enduring appeal of this iconic character.
But leaving aside entertainment, the Barbie world is a fascinating lens through which we can understand the world of intellectual property law.
Through Mattel, Barbie has navigated an intricate landscape of intellectual property rights and legal challenges throughout her history and this webinar, we will explore various legal cases and aspects of intellectual property law, including patents, trade secrets, trade marks, copyright, and more.
Patent Infringement – Bild Lilli
In 1961, Mattel faced a patent infringement lawsuit brought by the creators of the German sex doll ‘Bild Lilli.’
The dispute revolved around Lilli’s hip joint, which Marx claimed Barbie had copied. They argued that Barbie was a direct replica, misleadingly presenting itself as the original design.
The case was settled out of court.
A Twist in 1964
In 1964, Mattel turned the tables by acquiring both the copyright and patent for Bild Lilli. This twist highlights the strategic moves taken to secure intellectual property rights.
Trade Secrets – Bratz
The early 2000s saw the emergence of Bratz dolls, becoming a major rival to Barbie.
These dolls were created by a former Mattel employee.
In 2004, Mattel took legal action against Bryant and MGA Entertainment, the owner of Bratz.
Mattel claimed that he had stolen their trade secrets during his employment, arguing that he has previously agreed that anything created during his employment belonged to Mattel.
After a long legal battle, Mattel was victorious in 2008, receiving a $100 million award and the transfer of Bratz’s trademarks. However, the verdict was later overturned, leading to two more trials in 2010 and 2011 and to know how the saga ended you will need to come to the seminar! You might be surprised about that one.
Trade Mark Infringement – Aqua
In the late 90s, Danish-Norwegian band Aqua came out with the single “Barbie Girl.”
It featured lyrics that allegedly tarnished Barbie’s child-friendly image. The song featured lines that allegedly tarnished Mattel’s child friendly brand, including, ‘blonde bimbo’ and ‘kiss me here, touch me there, hanky panky’.
The repetitive Lyrics and Melody, and catchy music took on a humorous and somewhat satirical take on the Barbie doll persona.
The court in the United States in 2002 ruled that the song was a parody, protected by the First Amendment so no there was not trade mark infringement with the use of the word Barbie in the song.
Copyright Infringement – Food Chain Barbie
In 2003, photographer Tom Forsythe faced a legal battle with Mattel over his art series depicting naked Barbie dolls in various positions with kitchen appliances. Mattel claimed copyright, trade mark, and trade dress infringement.
Forsyth argued that the images were fair use and that he was using the dolls as a parody as part of a social critique of the objectification of women and America’s culture of consumption and consumerism.
The court sided with Forsyth. It stated that his use of the dolls was “extremely transformative in nature and parodic quality”. The court added, the copying of the dolls was justified given the parodic purpose and photographic medium and that the use was unlikely to be a substitute for Mattel’s consumers. 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.”
The Doll’s Making was would you believe, in itself was an IP Dispute!
The very creation of the Barbie doll had its roots in an IP dispute.
Ruth Handler introduced Barbie (1959) and Ken (1961), inspired by the Lilli doll’s design.
When its owners sued for infringement, Mattel strategically paid for the rights to the doll, acquiring the copyright and patent rights for the doll.
Mattel now has exclusive rights to produce and distribute Barbie and her derivatives and feature Barbie in public performances and media.
Trade marks
Mattel equally protects Barbie’s distinct brand identity, including its name, logo, and slogan, with its trade mark.
It has over 1000 trade marks for Barbie registered globally including some in Australia such as:
But guess what? Even though colours can be trade marked (think Cadbury Purple or Tiffany blue) Mattel has not been able to get its distinctive pink colour for the dollar registered (probably because it is too descriptive and in common use for female dolls).
Mattel has 24 registered trade marks for the word BARBIE in various goods and services.
The “Dungeon Doll” – Barbie in Bondage?
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 tired to legally stop Pitt from continuing with the doll – no surprises there!
Pitt was granted the fair use defence because her dolls were considered to be transformative and not mere replicas of the original.
The judge explained that a different analysis would have applied had Pitt dressed Barbie dolls in a different style of cheerleader outfit than those marketed by Mattel. To the Court’s knowledge, there was no Mattel line of “‘S&M’ Barbie” (and nor is there now!).
So the X-rated dolls “do not appear to pose any danger of usurping demand for Barbie dolls in the children’s toys market.”
“barbiesplaypen.com” in Mattel Inc. v. Internet Dimensions Inc. (2000)
While that was a loss for Mattel in court they did win 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 and commented along the way that the Barbie dolls, with their long blond hair and anatomically improbable dimensions are all about wholesomeness.
The ‘models’ on the barbiesplaypen.com site, could in no way be described as engaging in ‘wholesome’ activities.”
So we can see that when it comes to the law especially in the Barbie cases, context is really important.
Care for some “Barbie-Que Honey Truffle” potato chips?
More recently, in 2022 in the case of Mattel Inc v. Rap Snacks Inc. Mattel tried to stop snack maker “Rap Snacks Inc.” from using “Barbie-Que Honey Truffle” potato chips saying that they infringed Mattel’s registered trade marks.
The case settled and Rap Snacks removed the chips from its online store.
What would be the result if this were to be tested in Australia? Find out in the seminar!
June 2023- Barbie Bunny
In 2023, Mattel tried to get a TikTok influencer formerly known as “Bunny Barbie” for using the name “Barbie” in her handle.
It even took objection to Burberry Limited for using BRBY for its leather goods and clothing brand.
In the case, Mattel argued that BRBY is deceptively similar to its own well-known trade mark, pointing out the phonetic similarities and that consumers might see BRBY as an abbreviation of “Barbie.”
The outcome of this dispute is not known but lets chat about!
Barbie Bratz and Beyond …
The Barbie doll and the cases above are a prime example of the power of IP ownership in brand protection.
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.
This success is a reminder of how Barbie’s influence has extended far beyond the confines of the “Barbie world,” profoundly impacting IP law in the ever-evolving “real world.”
You too can apply the same strategies to your own branding.
Intellectual property plays a pivotal role in fostering brand recognition, enabling licensing, and creating barriers to market entry, and increasing a company’s overall value.
Here at Sharon Givoni Consulting we try and “Turn Your Ideas Into Assets”™
So what can we say after reading all of this?
The iconic Barbie doll, alongside all the Barbie trade mark, exemplifies the power of intellectual property (IP) in safeguarding and enhancing a product and brand.
Through astute IP ownership, Mattel has successfully harnessed technologies such as Artificial Intelligence (AI), Virtual Reality (VR), and Augmented Reality (AR), ensuring Barbie remains both unique and dynamically relevant in an ever-changing marketplace.
At Sharon Givoni Consulting, we say that the same principles of strategic IP ownership and management can be applied to your brand, too.
At Sharon Givoni Consulting, our mantra is: “Turning Your Ideas Into Assets.” We believe that with the right approach and guidance, your creative concepts can transform into tangible, valuable assets, propelling your business to new heights.
Link to the register for the Barbie talk: Barbie and IP Law – a Mattel Masterclass | Law CPD
Disclaimer: This article provides general information and does not constitute legal advice. To address specific legal matters, consult a legal professional.