Mattel Inc. v. Walking Mountain Productions
353 F.3d 792 (2003)
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Rule of Law:
The use of a copyrighted work in a transformative parody that comments upon or criticizes that work is protected as fair use. Similarly, the use of a trademark or trade dress in a parodic work to identify the object of the parody is protected as nominative fair use and is not actionable as dilution because it constitutes noncommercial speech.
Facts:
- In 1997, artist Thomas Forsythe began creating a photographic series titled "Food Chain Barbie."
- The series depicted nude Barbie dolls, owned by Mattel Inc., in various absurd, sexualized, and perilous situations, often juxtaposed with vintage kitchen appliances.
- Examples of Forsythe's works include "Barbie Enchiladas," showing dolls wrapped in tortillas in an oven, and "Malted Barbie," featuring a doll on a malt machine.
- Forsythe stated that his artistic purpose was to critique the objectification of women and the consumer culture associated with the Barbie doll.
- Forsythe promoted his work at art festivals, on a website, and through promotional postcards and business cards featuring the images.
- His commercial success was minimal, earning a total gross income of $3,659 from the series, at least half of which came from purchases made by Mattel's own investigators.
Procedural Posture:
- Mattel, Inc. sued Thomas Forsythe in the U.S. District Court for the Central District of California (a federal trial court), alleging copyright, trademark, and trade dress infringement, among other claims.
- Mattel's motion for a preliminary injunction was denied by the district court.
- The U.S. Court of Appeals for the Ninth Circuit summarily affirmed the denial of the preliminary injunction.
- After discovery, Forsythe moved for summary judgment on all of Mattel's claims.
- The district court granted summary judgment in favor of Forsythe, finding his work constituted fair use under copyright law, was unlikely to cause consumer confusion under trademark law, and was noncommercial speech exempt from dilution claims.
- Mattel appealed the district court's grant of summary judgment to the U.S. Court of Appeals for the Ninth Circuit.
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Issue:
Does an artist's use of a copyrighted doll in a photographic series that parodies and criticizes the doll and the cultural values it represents constitute fair use under the Copyright Act?
Opinions:
Majority - Pregerson, J.
Yes. An artist's use of a copyrighted doll in a photographic series that parodies and criticizes the doll and the cultural values it represents constitutes fair use. The court analyzed the four fair use factors. First, the purpose and character of the use weighed heavily in favor of Forsythe because his work was a transformative parody that used Barbie to criticize the doll and the societal ideals it represents. Second, while Barbie is a creative work, this factor is not significant in parody cases because parodies almost invariably target well-known expressive works. Third, the amount of the work used was justified; using the entire doll was necessary to conjure up the object of the parody in a photographic medium. Fourth, Forsythe's work created no cognizable market harm, as it would not serve as a market substitute for Mattel's products, and Mattel was highly unlikely to license a critical parody of its own product. The court also held that Forsythe's use of the Barbie trademark was protected speech under the Rogers test and his use of the trade dress was a nominative fair use. Finally, the dilution claim failed because parody is considered noncommercial speech and is therefore exempt.
Analysis:
This case significantly strengthens the fair use defense for artists who use iconic commercial products as subjects for parody and social commentary. It establishes that a work's highly transformative and critical nature can outweigh its commercial purpose in the fair use analysis. The ruling also extends the nominative fair use doctrine from trademarks (words) to trade dress (a product's appearance), providing a robust defense for referential uses in artistic works. This decision serves as an important precedent limiting the power of large corporations to use intellectual property law to stifle criticism or artistic expression that incorporates their brands.
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