Mattel Inc. v. Walking Mountain Productions
2003 WL 23018285, 353 F.3d 792 (2003)
Rule of Law:
Artistic parody of a copyrighted or trademarked work can constitute fair use under copyright law and nominative fair use under trademark/trade dress law, particularly when the new work is highly transformative, only uses what is reasonably necessary for identification, does not explicitly mislead about sponsorship, and does not significantly harm the market for the original.
Facts:
- Thomas Forsythe, a self-taught photographer, developed a series of 78 photographs entitled "Food Chain Barbie" in 1997.
- Forsythe's photographs generally depict one or more nude Barbie dolls juxtaposed with vintage kitchen appliances in various absurd, often sexualized, and apparently dangerous situations, such as "Barbie Enchiladas" showing dolls wrapped in tortillas in a casserole dish.
- Forsythe intended his photographic series to critique the objectification of women associated with Barbie and to lambast the conventional beauty myth and societal acceptance of women as objects, choosing Barbie as a subject because he believed she embodies these aspects of consumer culture.
- Forsythe used the word "Barbie" in some titles of his works and prominently featured a statement describing his intent to critique and ridicule Barbie on his website.
- Forsythe displayed his works at two art festivals, promoted them with postcards and business cards, and featured low-resolution images on a non-commercial website, earning a total gross income of $8,659 from the series.
- Mattel Corporation owns the copyright to the unadorned Superstar Barbie head and parts of the figure, and possesses trade dress in Barbie's overall appearance and the registered trademark "Barbie."
Procedural Posture:
- On August 23, 1999, Mattel filed a lawsuit against Thomas Forsythe in the United States District Court for the Central District of California (Los Angeles federal district court), alleging copyright, trademark, and trade dress infringement.
- Forsythe filed a motion to dismiss Mattel's First Amended Complaint, which was granted with leave to amend.
- Mattel filed a Second Amended Complaint, and Forsythe again moved for dismissal; the court granted the motion in part, dismissing Mattel's Eleventh Claim for federal trade libel with prejudice.
- On August 11, 2000, Mattel moved for a preliminary injunction, which the Los Angeles federal district court denied, and the Ninth Circuit summarily affirmed.
- During discovery, Forsythe served on Mattel the expert witness report of Dr. Douglas Nickel, leading Mattel to subpoena Dr. Nickel and his employer, the San Francisco Museum of Modern Art (SFMOMA), a non-party to the action.
- On May 30, 2001, Mattel filed an ex parte application in the United States District Court for the Northern District of California (San Francisco federal district court) to enforce the SFMOMA subpoena.
- On June 4, 2001, the San Francisco federal district court denied Mattel's application, quashed the subpoena, and held that it would award SFMOMA's counsel fees and expenses incurred in opposing the application, subsequently issuing a written order to that effect.
- On July 16, 2001, Forsythe moved for summary judgment in the Los Angeles federal district court, and also moved to exclude certain reports and testimony of Mattel's experts and a videotape.
- Mattel filed a cross-motion for summary judgment on some of Forsythe's affirmative defenses.
- On August 22, 2001, the Los Angeles federal district court granted Forsythe's motion for summary judgment, holding that his use of Mattel's copyrighted work was fair use, his use of trademark and trade dress caused no likelihood of confusion, and his trademark dilution claim failed as a noncommercial use; the court also dismissed Mattel's remaining state claims.
- The Los Angeles federal district court also denied Mattel's cross-motion for summary judgment as moot and excluded some of Mattel's expert testimony and a videotape.
- Mattel appealed the Los Angeles federal district court’s grant of summary judgment, the dismissal of its false advertising claim, and the San Francisco federal district court’s order quashing the discovery subpoena and awarding attorney’s fees.
- Forsythe cross-appealed the Los Angeles federal district court’s order denying him attorney’s fees and costs under the Copyright and Lanham Acts.
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Issue:
1. Does an artist's creation and sale of photographs depicting Mattel's "Barbie" doll in sexually suggestive and absurd positions, intended as a social critique, constitute fair use under copyright law, even if the artist has a commercial expectation? 2. Does an artist's use of the "Barbie" trademark and trade dress in such photographs and titles infringe upon Mattel's trademark and trade dress rights under the Lanham Act, or cause dilution, when the use is artistic and critical? 3. Did the district court abuse its discretion by quashing Mattel's overly broad discovery subpoena issued to a non-party museum (SFMOMA) and awarding attorney's fees? 4. Did the district court err in its legal analysis or abuse its discretion by denying attorney's fees to Forsythe under the Copyright and Lanham Acts without sufficient justification?
Opinions:
Majority - Pregerson, Circuit Judge
Yes, Forsythe's use of the Barbie doll is fair use under copyright law because his photographs constitute a highly transformative parody of Mattel's work, intended as social commentary, and his commercial expectation is secondary to this purpose. The court applied the four fair use factors from 17 U.S.C. § 107. First, the "purpose and character of the use" weighed heavily in Forsythe's favor; his works are clearly a transformative parody offering social criticism, a form of speech protected by the First Amendment. The court emphasized that a work's parodic nature is a question of law, not public opinion, and that commercial gain does not negate fair use for highly transformative works. Second, the "nature of the copyrighted work" (Barbie being creative) weighed slightly against Forsythe, but was not significant, as parodies almost invariably copy publicly known, expressive works. Third, the "amount and substantiality of the portion used" favored Forsythe, as using the entire doll or its parts was reasonably necessary for his photographic medium and parodic purpose, and such use transformed the doll's character. Fourth, the "effect of the use upon the potential market" also favored Forsythe, as his critical, adult-oriented artistic photographs were highly unlikely to substitute for Mattel's products or licensed derivatives; decreased value due to effective criticism is not a cognizable market harm under copyright law, and Mattel would not license such critical works. No, Forsythe's use of the "Barbie" trademark and trade dress does not constitute infringement or dilution under the Lanham Act because his artistic and critical use is protected by the First Amendment and qualifies as nominative fair use. For the trademark claim, the court applied the Rogers v. Grimaldi test, noting that the "Barbie" mark has become a cultural icon, bringing First Amendment concerns into play. Forsythe's use of "Barbie" in his titles was artistically relevant to his critical work and did not explicitly mislead as to Mattel's sponsorship, thus the public interest in free expression outweighed any potential confusion. For the trade dress claim, the court found Forsythe's use to be nominative fair use, satisfying three elements: (1) the Barbie doll is not readily identifiable without using her likeness in a photographic work; (2) Forsythe used only as much of the trade dress as was reasonably necessary to represent his parodies of Barbie, particularly regarding sexuality and body image; and (3) he did nothing to suggest Mattel's sponsorship or endorsement, as his overall promotional materials clearly conveyed a critical, anti-Barbie message. Trademark dilution claims were also dismissed because Forsythe's parodic work was considered noncommercial expression. Yes, the San Francisco federal district court did not abuse its discretion in quashing Mattel's Rule 30(b)(6) subpoena to the SFMOMA and awarding attorney's fees. The subpoena was "abusively drawn" and "way too broad," seeking information irrelevant to the litigation and appearing to be served for the improper purpose of annoying and harassing the non-party SFMOMA and its expert witness, Dr. Nickel. The court's sanction under Rule 45(c) was therefore justified. No, the district court’s denial of attorney’s fees to Forsythe under the Copyright and Lanham Acts is VACATED and REMANDED for reconsideration. The district court potentially misstated the legal standard for Copyright Act fees by focusing on whether the award of fees would further the Act's purposes, rather than whether the successful defense of the action did. For Lanham Act fees, the court failed to provide sufficient reasoning for finding the case not "exceptional," particularly given that Mattel's claims appeared groundless or unreasonable considering Forsythe's protected nominative fair use.
Analysis:
This case significantly reinforces the protection of artistic parody under both copyright and trademark law, particularly when the work is highly transformative and offers social commentary. It clarifies that a work's commercial aspects do not negate its fair use defense if its primary purpose is critical and transformative. The court's application of the Rogers test and establishment of the nominative fair use framework for trade dress provides important guidance for artists using established cultural icons, balancing intellectual property rights with First Amendment free expression concerns. Furthermore, the case serves as a warning against overly broad and harassing discovery practices, emphasizing the courts' power to quash subpoenas and impose sanctions.
