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‘Come on Barbie Let’s Go File an Opposition’

The Barbie trademark was filed by Mattel on July 2, 1958 and the Barbie doll made its official debut in March 1959. Ruth Handler, the creator of Barbie, was inspired by the Lilli Doll, ultimately creating her own dolls which she named Barbie and Ken, after the children of the established Lilli Doll family. As such, even the initial Barbie product was not created without intellectual property dispute. The owners of Lilli Doll sued Mattel following the conception of Barbie for trademark infringement (Mattel, Inc. v. Greiner and Hausser Gmbh), leading to Mattel’s eventual acquisition of the copyright and patent rights for the doll. Following the acquisition Mattel successfully built up the reputation of its doll, and in the past 30 years around 600 million Barbie dolls have been sold.


Throughout Barbie’s lifetime Mattel has guarded the intellectual property gained by its initial acquisition zealously. Some might even suggest that Mattel has shaped trademark law in the US and Canada following its aggressive brand defence in the nineties and noughties. Indeed, previous judgement from these cases leaves little doubt that Barbie is a ‘famous’ and ‘distinctive’ trademark, as defined by the Lanham Act in the United States.


Such aggressive brand defence serves both as a reminder of the value of intellectual property and the importance of protecting brand reputation. Notwithstanding this, Bloomberg suggests that actually Mattel's aggressive IP strategy was poorly chosen. Many of the battles Mattel fought were lost, sometimes at exceptionally high costs. Mattel vs. MGA Entertainment, for instance, resulted in Mattel having to pay $138 million for its opponent’s legal fees.


Over the last 30 years Mattel has filed multiple infringement claims as well as sent cease and desist letters to those who they believed were infringing, denigrating or parodying their brand. These warning shots were fired to a variety of organisations, ranging from an animal hospital in China named ‘Barbitan’ through to Nicki Minaj branded ‘Barbie-Que Honey Truffle’ crisps.


Mattel’s aggressive litigation has earned the organisation a reputation as a ‘brand name bully and perpetual Goliath.’ However, recently the commercial world has questioned whether Mattel has changed its course. Public voices are suggesting that the Barbie movie is indicative of a new IP strategy for Mattel. Indeed, in conjunction with the recent release of the Barbie movie, Mattel has licensed its intellectual property to many Hollywood studios in an attempt to reverse its recent sales decline. Although some call this new legal strategy “a brilliant change in counsel”, others question whether the move will transform Barbie into a more generic, less legally protected brand.


In any case, perhaps people should not ponder too hard upon whether Mattel has transformed its IP strategy, given the organisation recently filed an opposition to a trademark application by Burberry. This article will review Mattel’s previous history of brand protection in a new light following these recent events.


Mattel v MCA Records (1997)


Traditionally, Mattel’s trademark cases have revolved around wordmarks and speech, and Mattel has gained ‘extensive common law’ rights to Barbie and Barbie-related trademarks. The phrases that Mattel has collected and trademarked include ‘Barbie Dreamhouse’, ‘Malibu Barbie’, ‘Barbie Life’ and ‘Barbie Princess Power.’ Although unsuccessful, at some stage the organisation did also attempt to have its very own Barbie Pink.


None of these broader wordmarks, however, appeared in the 1997 single ‘Barbie Girl’ by Aqua. Rather, Aqua’s lyrics invoked sexually suggestive themes in combination with Mattel’s more wholesome image of its precious doll. Mattel took Aqua’s record label (MCA Records) to court for infringement, trademark dilution and unfair competition. Unfortunately for Mattel, the song was ruled to be a parody, therefore protected under the First Amendment, as the right to free speech in the case of criticism or parody prevails.


Famously, at the conclusion of Mattel’s later appeal of this decision, Judge Alex Kosinski wrote in his opinion ‘The parties are advised to chill.’ However, only three years later Mattel pursued a similar case against Tom Forsythe (Mattel Inc. v. Walking Mountain Productions) which was also dismissed on grounds of parody.


Mattel Inc. v. Walking Mountain Productions (2000s)


In the early 2000s, Mattel again sued for infringement. Tom Forsythe, a Utah based artist, had produced a series of 78 photographs, entitled ‘Food Chain Barbie’. Forsythe’s artwork was created as a social commentary upon beauty stereotypes, domestic life and the objectification of women. The focus of Forsythe’s photographic series was Barbie, in the nude, placed in controversial positions whilst interacting with various kitchen appliances- such as ‘Barbie Enchiladas’. Forsythe’s work was displayed in various galleries and quickly rose to prominence.


In response to Forsythe’s work, Mattel rapidly filed for action in the District Court of California, but their trademark dilution claim was dismissed. Comically similar to the last opinion cited in Mattel v. MCA Records, the opinion of this case from the US Court of Appeal for the Ninth Circuit of California reads: ‘Copyrights don’t protect Barbie from being parodied or threatened by a food processor.’


Mattel, Inc v. 3894207 Canada (2002)


In 2002, Mattel discovered that a Montreal-based chain of barbecue and grill restaurants had filed for the mark ‘Barbie’s’ in 1993 in association with restaurant services, take-out services, catering and banquet services. Mattel filed this case on grounds of confusion, lost, appealed and then had the appeal dismissed. The Trade-marks Opposition Board of the Canadian Intellectual Property Office accepted the argument that it would be unlikely to cause confusion.


Writing in the University of Miami Inter-American Law Review, Somerstein poses that Mattel might have been losing the battle at this stage, but they were winning the war. Somerstein suggests that this third case actually helped reshape IP law in Canada as it marked the ‘slow erosion of the entrenched copyright and trademark laws against large corporations.’ This is an interesting conclusion given that the Mattel, Inc v. 3894207 Canada Inc case caused the Supreme Court to rule to limit protection on "famous" trademarks. Additionally, the owner of Barbie’s stated that the free publicity the case granted was well worth the $250,000 in legal fees.


Mattel v MGA Entertainment (2004)


The greatest form of legal humiliation for Mattel arrived in 2013 after they had initiated a nine-year battle concerning copyright and trade secrets with MGA Entertainment, owner of the Bratz doll. The idea for the Bratz dolls was founded by Carter Bryant, a former Mattel employee, leading to Mattel’s accusations that he had worked on creating Bratz whilst still in their employ. Initially it was ruled that MGA owed Mattel for legal damages, however the organisations later returned to court in a conflict over trade secrets. At the culmination of the saga, Mattel was forced to pay $138 million in legal fees to the opposition (represented by Orrick, Herrington & Sutcliffe).


Mattel v Burberry (2023)


The last of these many failed attempts at aggressive brand attempts is the most recent opposition that Mattel has filed against a trademark application by Burberry. Mattel is filing on ground of confusion, as the mark ‘BRBY’ not only looks and sounds similar, but has also been registered in overlapping classes to the Barbie mark. However Mattel’s claim does not stop here, as the company further asserts that the affiliation is an intentional one, with Burberry looking to profit from Barbie’s reputation. Although this may seem the most likely of all of these court cases, Gerben notes that Burberry’s clothing is so well-known that many consumers might easily recognise the abbreviated name. Although this case has only just begun, a ruling would likely have a ‘long-lasting’ effect upon trademark law, as well as the business of both organisations.


Conclusion

Although it may have appeared as though- following the many brand licences doled out during the production of the movie ‘Barbie’- Mattel grew lax in its brand defence, appearances can be misleading. That said, when asked by Reuters, Rebecca Tushet (a Harvard Law professor who has previously analysed Mattel’s litigation) stated that therecent case does strike her as distinct. Perhaps the leopard can change its spots but we will have to wait until the resolution of Mattel v Burberry to find out.

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