The IT Law Wiki


Mattel, Inc. v. Walking Mountain Prods., No. CV-99-08543 (C.D. Cal. Aug. 22, 2001), aff’d, 353 F.3d 792 (9th Cir. 2003)(full-text), on remand, 2004 U.S. Dist. Lexis 12469 (C.D. Cal. June 24, 2004) (granting defendant’s motion for attorneys fees and expenses).

Factual Background[]

Plaintiff produces “Barbie” dolls and owns the BARBIE trademark. In 1997, defendant Thomas Forsythe produced a series of photographs titled “Food Chain Barbie,” in which he posed nude BARBIE dolls in danger of being attacked by vintage kitchen appliances. The “Barbie” name was used in some of the titles of these works. Forsythe created the works to criticize the “objectification of women associated with Barbie” among other reasons. Defendant marketed these photographs through postcards and business cards bearing one of the works and on a website, but the photographs could not be purchased through the website. The website featured a statement by Forsythe in which he described his intent to critique and ridicule “Barbie.” Defendant grossed only $3,659 from the “Food Chain Barbie” series.

Trial Court Proceedings[]

Plaintiff sued defendant for trademark and trade-dress infringement, dilution, and copyright infringement. The district court denied plaintiff’s motion for a preliminary injunction. The district court then granted defendant’s motion for summary judgment, finding that defendant’s use of plaintiff’s trademark and trade dress caused no likelihood of confusion.

The court ruled that defendant’s First Amendment rights outweighed plaintiff’s “relatively weak showing of likelihood of confusion.” It also found no evidence of initial-interest confusion because defendant’s use of the BARBIE mark on his website and in the metatags was “merely descriptive of his products.”

The court further dismissed plaintiff’s dilution claim because defendant’s use was a parody and thus “noncommercial.” The district court denied defendant’s request for attorney’s fees, however, because the case was not “exceptional.”

Appellate Court Proceedings[]

Plaintiff appealed the district court’s grant of summary judgment, and defendant appealed the denial of attorney’s fees. Regarding trademark infringement, the Ninth Circuit held that because plaintiff’s mark is one of the marks that “transcend their identifying purpose” and “enter public discourse and become an integral part of our vocabulary,” it “assume[s] a role outside the bounds of trademark law” such that “First Amendment protections come into play.” Here, because the BARBIE mark in the titles of Forsythe’s works and on his website has artistic relevance to his works, the court held that “the public interest in free and artistic expression greatly outweigh[ed] its interest in potential consumer confusion about Mattel’s sponsorship of Forsythe’s works.”

On the issue of trade dress, the Ninth Circuit ruled that defendant’s uses of BARBIE dolls constituted nominative fair use because: (a) defendant’s use of the dolls in the photographs was reasonably necessary “to conjure up the Barbie product in a photographic medium,” (b) defendant used only as much of the trade dress as was reasonably necessary to carry out his “goal of representing the social implications of Barbie,” and (c) defendant did not suggest sponsorship or endorsement by plaintiff because “it is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated” with Forsythe’s critical works.

The appeals court also affirmed the district court’s dismissal of plaintiff’s dilution claim, stating that “Forsythe’s artistic and parodic work is considered noncommercial speech” and thus not subject to a dilution claim.

Finally, the Ninth Circuit vacated and remanded the district court’s denial of attorney’s fees under both the trademark and copyright laws because it failed to provide any reasoning for concluding that the case was not exceptional.

Trial Court Proceedings on Remand[]

On remand, the district court awarded defendant its attorney’s fees and costs on both the copyright and trademark claims. Regarding plaintiff’s trademark infringement, trade dress infringement, and dilution claims, the court determined that all three claims were “groundless and unreasonable“ to make them “exceptional” for purposes of awarding attorney’s fees under the Lanham Act. In particular, the court relied on plaintiff’s status as a “sophisticated plaintiff” to support its finding that plaintiff’s dilution claim was unreasonable and groundless. The court awarded defendant $1,584,089 in attorney’s fees and $241,797.09 in costs.