The U.S. Court of Appeals for the Ninth Circuit recently upheld a district court’s grant of summary judgment in favor of a photographer who produces and sells photographs containing Mattel’s "Barbie" doll, holding the photographer’s right to free expression and fair use trumped Mattel’s copyright and trademark rights. Mattel, Inc. v. Walking Mountain Prods., Case Nos. 01-56695, 01-57193 (9th Cir. Dec. 29, 2003).
Defendant photographer Tom Forsythe specializes in photographs with social and political overtones. Forsythe developed a series of photographs entitled "Food Chain Barbie," in which he depicted Barbie in various absurd and often sexualized positions relating to food (including Malted Barbie, Fondue a la Barbie and Barbie Enchiladas). Forsythe considered his work a critique of the objectification of women, as exemplified by Barbie. Mattel did not agree, and sued Forsythe for, among other things, copyright and trademark infringement.
The district court granted Forsythe’s motion for summary judgment, holding the pictures to be a non-infringing "fair use." In affirming, the Ninth Circuit balanced the four conventional fair use factors: the purpose and character of the use, including whether it is commercial or for nonprofit educational uses; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for, or value of, the copyrighted work.
Regarding the "purpose and character" of the use, the Court noted that Forsythe’s photographs turned Mattel’s image of Barbie as "the ideal American woman" on its head and, thus, qualified as both transformative in their own right and works of parody. (The Supreme Court has recognized that works of parody are, by their nature, sufficiently transformative to fit clearly under the fair use exception.)
Although the second factor, the nature of the copyrighted work, weighed against Forsythe because the copyrighted work was creative, the Court stated that this is a lesser factor in the balancing test.
The Court found that the third and fourth factors weighed in favor of Forsythe, as the extent of the Barbies used by Forsythe was justifiable, and Forsythe’s work was in the "market for adult-oriented artistic photographs of Barbie," a market Mattel was not likely to enter. Finally, in holding for Forsythe, the Court noted the public benefits of allowing such use, including to encourage artistic freedom and expression and to promote the very creativity and criticism protected by the Copyright Act.
In finding no trademark infringement, the Court followed the rule set out by the Second Circuit in Rogers v. Grimaldi which requires courts to construe the Lanham Act "to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Here, Forsythe’s use of the Barbie mark was clearly relevant to his work and did not explicitly mislead as to Mattel’s sponsorship of the works. Accordingly, the Ninth Circuit held that the public interest in free and artistic expression greatly outweighed its interest in potential consumer confusion about Mattel’s sponsorship of Forsythe’s works.
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