Photographing trademarked items. Photog 1, Mattel 0

[From New York Times, 2004.06.28]

Judge Says Artist Can Make Fun of Barbie
By BILL WERDE

Published: June 28, 2004

Seven years ago when Tom Forsythe, an artist and photographer,
was searching for a subject for a new project, he settled on
Barbie, ultimately producing a series of 78 photographic images
of the wildly famous doll showing her nude, and sometimes posed
provocatively, in or around various household appliances.

"I thought the pictures needed something that really said 'crass
consumerism,' and to me, that's Barbie,'' Mr. Forsythe said. "The
doll is issued in every possible role you can imagine and comes
with every possible accessory for each and every role."

Mr. Forsythe developed a theme that he called "Barbie's power as
a beauty myth." He displayed his photographs at art fairs in Utah
and Kansas City, generating a few thousand dollars in sales but
otherwise attracting little notice.

But his work drew the attention of Mattel Inc., which has
manufactured the Barbie doll since 1959. In the summer of 1999,
Mattel sued Mr. Forsythe for copyright and trademark infringement.

After a lengthy legal tussle, which included a series of appeals,
a federal judge late last week instructed Mattel to pay Mr.
Forsythe legal fees of more than $1.8 million.

"I couldn't have asked for a better result," said Mr. Forsythe,
46, of Kanab, Utah. "This should set a new standard for the
ability to critique brands that are pervasive in our culture."

Mattel officials and the company's lawyers in the case, the Los
Angeles firm of Quinn Emanuel Urquhart Oliver & Hedges, did not
respond to telephone and e-mail messages on Sunday. Mattel can
appeal the award, but the company would have to appeal to the
Ninth Circuit Court of Appeals in San Francisco, which had
earlier instructed the district court to consider awarding legal
fees.

When Mattel filed suit in August 1999, Mr. Forsythe said, he
searched about, often in vain, for legal counsel before the
American Civil Liberties Union of Southern California and a team
of lawyers from the San Francisco law firm of Howard, Rice,
Nemerovski, Canady, Faulk & Rabkin agreed to take his case.

Mattel has aggressively protected the Barbie likeness and
trademark. In December 1999, the toy maker sued Seal Press over
the book "Adios, Barbie"; the publisher agreed to remove Barbie's
name from the book's title and to remove images of the doll's
clothing and accessories from its cover. Early last year, the
Supreme Court upheld an earlier court's dismissal of a Mattel
suit against the record label MCA after the recording group Aqua
had released a song called "Barbie Girl" that Mattel said defamed
Barbie with sexual innuendo.

In February 2001, Mattel lost a motion for a preliminary
injunction in Mr. Forsythe's case. Mr. Forsythe's lawyers then
moved for summary judgment, on the grounds that his work was
parody, and thus protected under the fair use provisions of the
Copyright Act.

In August 2001, a judge from Federal District Court in Los
Angeles agreed, granting judgment in favor of Mr. Forsythe but
not awarding him legal fees. Mattel and Mr. Forsythe both
appealed, with the company seeking a different judgment and the
artist seeking legal fees. In December 2003, a three-judge panel
from the Ninth Circuit Court upheld the decision against Mattel
and sent the matter of legal fees back to Judge Ronald S. W. Lew
of the Los Angeles court, with instructions to reconsider the issue.

"Plaintiff had access to sophisticated counsel who could have
determined that such a suit was objectively unreasonable and
frivolous," Judge Lew wrote in his order. "Instead it appears
plaintiff forced defendant into costly litigation to discourage
him from using Barbie's image in his artwork. This is just the
sort of situation in which this court should award attorneys fees
to deter this type of litigation which contravenes the intent of
the Copyright Act.''

The order also characterized Mattel's claim of trademark
infringement as "groundless and unreasonable.''

Jonathan Zittrain, a professor at Harvard Law School who
specializes in Internet and copyright law, said, "It's enough to
give corporations with brands they want to protect and expand
pause to consider whether to simply reflexively unleash the
hounds the minute they see somebody doing something that relates
to their brand of which they don't approve.

"It may send a signal that a 'take no prisoner' litigation
strategy against the little guy has new risks for the plaintiff,"
he said.

The Copyright Act allows for tens of thousands of dollars in
statutory damages per violation. Professor Zittrain said the risk
of such damages "chills'' many defendants, even if they have a
strong case.

"Maybe now when an angry C.E.O. picks up the phone to counsel and
says 'sue this guy,' " he said, "instead of saluting and sending
the bill, the lawyer may say 'I have to warn you, this could
boomerang.' "

Alan Browne wrote, in part:

respond to telephone and e-mail messages on Sunday. Mattel can
appeal the award, but the company would have to appeal to the
Ninth Circuit Court of Appeals in San Francisco, which had
earlier instructed the district court to consider awarding legal
fees.

I am willing to bet that Mattel appeals.

This is a lonely victory in a long line of suits by Mattel. See
http://www.cieux.com/bizarre.html
and go directly to the bottom of the page for dead links to dead sites shut
down by Mattel's lawyers.

I'm looking for a link to the court's decision announced today - anyone
know where it is?
--
Philip Stripling | email to the replyto address is presumed
Legal Assistance on the Web | spam and read later. email to philip@
http://www.PhilipStripling.com/ | my domain is read daily.

Phil Stripling wrote:

Alan Browne wrote, in part:


respond to telephone and e-mail messages on Sunday. Mattel can
appeal the award, but the company would have to appeal to the
Ninth Circuit Court of Appeals in San Francisco, which had
earlier instructed the district court to consider awarding legal
fees.


I am willing to bet that Mattel appeals.

They've already irritated the appeals court (not sure if they
would draw the same judges). This is a free speech issue.
"Barbie", is such a universally recognized thing and parody about
it would (should) be recognized as free speech. (Note: I only
saw the one photo on the NYT site, a bunch of dolls in the
oven... clearly "humor" (so to speak)).

If I purchase a product (such as Barbie) and then use it as a
prop in a photo that I publish; just how far can I go before
Mattel believe I'm abusing their copyright on Barbie?

Cheers,
Alan




--
--e-meil: there's no such thing as a FreeLunch.--

Alan Browne writes:

If I purchase a product (such as Barbie) and then use it as a
prop in a photo that I publish; just how far can I go before
Mattel believe I'm abusing their copyright on Barbie?

Not copyright; trademark. Two different things.

--
Transpose hotmail and mxsmanic in my e-mail address to reach me directly.

Alan Browne writes:

If I purchase a product (such as Barbie) and then use it as a
prop in a photo that I publish; just how far can I go before
Mattel believe I'm abusing their copyright on Barbie?

Well, given that they have sued Barbie fan clubs off the Web for publishing
photographs of the dolls, you can't go anywhere.
--
Philip Stripling | email to the replyto address is presumed
Legal Assistance on the Web | spam and read later. email to philip@
http://www.PhilipStripling.com/ | my domain is read daily.

Phil Stripling wrote:

Alan Browne writes:


If I purchase a product (such as Barbie) and then use it as a
prop in a photo that I publish; just how far can I go before
Mattel believe I'm abusing their copyright on Barbie?


Well, given that they have sued Barbie fan clubs off the Web for publishing
photographs of the dolls, you can't go anywhere.

But those were "Barbie" centric sites (right?), if I have Barbie
in my shot as an element of the shot, at what point do Mattel go
balistic? A photo of a little girl combing Barbie's hair seems
natural enough? What if I make a photo essay about a girl and
her collection of Barbie's and accessories? The photo essay is
about the girls life, not the doll. Where is the line?

GM won't sue me if I have a GM auto in the shot...

--
--e-meil: there's no such thing as a FreeLunch.--

Alan Browne writes:

But those were "Barbie" centric sites (right?), if I have Barbie
in my shot as an element of the shot, at what point do Mattel go
balistic? A photo of a little girl combing Barbie's hair seems
natural enough? What if I make a photo essay about a girl and
her collection of Barbie's and accessories? The photo essay is
about the girls life, not the doll. Where is the line?

GM won't sue me if I have a GM auto in the shot...

I see your point, but have you googled car clubs?
http://www.chevyclub.com/
http://westcoastfalcons.com/
http://www.rosecitycorvettes.org/
http://www.car-list.com/carclub.html

All these are "car centric" sites with tons of photos of whatever car the
club is interested in. They _haven't_ been sued, as you say. _Barbie_ fan
clubs have been.

http://www.dolliedish.com/ was called The Dolls, the Dish, the Dollars, and
it _was_ aimed at seriouse collectors. Sued by Mattel for displaying photos
of Barbie online. See Wired's story at
http://www.wired.com/news/culture/0,1284,8037,00.html
(called Cease-and-Desist Barbie).

See my links at
http://www.civex.com/bizarre.html
for links to sites with photos of Barbie as an element of the shot which
have been sued off the Web.

I fear we're getting way off topic from the original post about
photographers' rights, so I'll let it go.
--
Philip Stripling | email to the replyto address is presumed
Legal Assistance on the Web | spam and read later. email to philip@
http://www.PhilipStripling.com/ | my domain is read daily.

Phil Stripling said:

Alan Browne writes:

If I purchase a product (such as Barbie) and then use it as a prop in a
photo that I publish; just how far can I go before Mattel believe I'm
abusing their copyright on Barbie?

Well, given that they have sued Barbie fan clubs off the Web for
publishing photographs of the dolls, you can't go anywhere.

So are we to assume that we must obtain a release form from Barbie for any
photogarphs she may appear in?

--
Ask yourself,
"What would Elvis do?"

In article , Dallas
writes
Phil Stripling said:

Alan Browne writes:

If I purchase a product (such as Barbie) and then use it as a prop in a
photo that I publish; just how far can I go before Mattel believe I'm
abusing their copyright on Barbie?

Well, given that they have sued Barbie fan clubs off the Web for
publishing photographs of the dolls, you can't go anywhere.

So are we to assume that we must obtain a release form from Barbie for any
photogarphs she may appear in?

Nah, just switch allegiance to Cindy - perhaps the makers would
appreciate the free advertising.
--
David Littlewood

Alan Browne writes:

GM won't sue me if I have a GM auto in the shot...

They might.

One of the weird things about trademarks in the U.S. is that you must
actively defend them, otherwise they might pass into the public domain.
Some companies have learned this the hard way, including Xerox,
Coca-Cola, and Kimberly-Clark (makers of Kleenex). Not defending a
trademark implies that you don't mind if it ceases to be a trademark.

--
Transpose hotmail and mxsmanic in my e-mail address to reach me directly.