Is Shepard Fairey in the business of infringing copyrights or creating new transformative works?

That is a hard question to answer and I am not sure it can be answered in this brief blog post.  It is a question a judge will be answering at some point in the future in the Fairey v. The Associated Press complaint for Declaratory Judgment Injunctive Relief filed in the Southern District of New York case number 09CIV01123. 

The general facts are this:  Visual artist Shepard Fairey created what has become known as the "Hope Obamacon." Fairy used a picture of President Obama and created an abstracted graphic rendition of President Obama gazing up and to the viewer’s right, colored in a palette of red, white, and blue with the word HOPE.  The photo that is the basis of Fairey's work was taken by an AP freelance photographer, Mannie Garcia.

AP claims they own the copyright in the photo, Mr. Garcia claims he owns the copyright in the photo, and Fairey is claiming there has been either 1) no infringement; or 2) there has been infringement but he has a valid defense based upon "fair use" ...  a transformation from the photo to the final product. More...

DOMAIN NAMES/CYBERSQUATTING/DILUTION

A series of cases found Mattel's trademark "BARBIE" famous, and that domain names containing derivatives barbiesplaypen.com, barbiesbeachwear.com and barbiesclothing.com diluted the mark.

Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q. 2d 1620. (S.D.N.Y. 2000)

Mattel Inc., v. Jacom, Inc., 48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998)

Mattel, Inc. v. Adventure Apparel, 2001 WL 1035140 (S.D.N.Y. 2001)

Mattel, Inc. v. Barbie-Club.com, 310F.3d 293 (2d Cir.2002) 

Mattel, Inc. v. Global China Networks, LLC, 2007 WL 3332662 (S.D.N.Y.,2007)

Odds & Ends:

Entm't v. KIDdesigns, Inc., 2005 U.S. Dist. LEXIS 44386

Mattel was sued as co-defendant alleging Mattel allowed a Barbie compilation CD to be released with knowledge that royalties were not being paid properly by another party.

Gunther-Wahl Productions, Inc. v. Mattel, Inc., 104 Cal.App.4th 27, 128 Cal.Rptr.2d 50 (Cal.App. 2 Dist., 2002.)

Plaintiff sued Mattel for breach of an implied-in-fact contract, alleging that toys were based on ideas he presented to Mattel. Plaintiff claimed that his Flutter Faeries ideas were “taken from him.” Gunther-Wahl claimed that ideas for various Mattel dolls, including Barbie and the Polly Pocket line, that followed his presentation to Mattel of Flutter Faeries in 1993 were similar to his concept for Flutter Faeries. The jury found for the Plaintiff. The court of appeals tossed the jury instructions, so the case was remanded.

This is not an exhaustive list of litigation involving the Barbie brand, but a fun look at selected cases. I have inserted links to either free case law or topical discussions on the cases when available. Special thanks to third year law student James “Mitch” Mitchell for his research assistance.

Trademark/Unfair Competition:
Walter v. Mattel, Inc., 210 F.3d 1108 (9th Cir. 2000)

Plaintiff Walter sued Mattel for misappropriation of her trade name, Pearl Beach, when Mattel released the Pearl Beach Barbie.  Walters was clearly the senior user of the name in her commercial illustration business.  Walter claims there was a likelihood of consumer confusion that consumers would believe her services and the Mattel products were associated.  The Court held Ms. Walters was unable to show a likelihood of reverse confusion between her business and Barbie because the products were not complementary, were not sold to the same class of purchasers, and were not similar in function.

Copyright Infringement:

The Miss America Organization v. Mattel, Inc., 945 F.2d 536 (2nd 1991).
There she goes, "Miss America."  In 1991 a shipment of 11 1/2 inch glamorous but--according to their maker--wholesome, high fashion dolls were detained in customs because of a striking resemblance to Barbie.  These dolls were ordered by the Miss America Organization, via Kenner Corporation. When Kenner began importing its "Miss America" line of dolls into the United States, Mattel asked U.S. Customs to detain them. Kenner and the Miss America Organization responded by suing Mattel and United States Customs in federal court.

This case is a really insightful look at the interplay of the administrative procedures of US Customs seizing items that Customs deems infringing and comparing that to the copyright infringement standards applied in federal court. More...

In anticipation of Barbie® turning 50 in March this year, I thought we could take a look at some of Barbie’s legal adventures over the years.  Because so much has been written on the Bratz dispute we will be focusing on other legal battles.   Jump in the Barbie Camper and let’s get the show on the road. First, a little history.  Barbie was actually born in 1958, at least according to her driver’s license, I mean trademark registration, which states Barbie was first used on dolls May 9, 1958.  I guess Barbie wanted to be a year younger so all the press states she’s turning 50 this year, I think she is really 51.  I stopped counting the number of copyright registrations that are in place for “molded dolls” with Barbie in the name; along with the “accessory” Barbie items that are registered. Mattel has covered the bases to protect the Barbie brand intellectual property.  Mattel seems to be the defendant as often as it is the plaintiff in varied legal actions from parody to copyright infringement to reverse likelihood of confusion actions. 

• PARODY

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.2002)
In 1997, Aqua, a Danish band, produced the song “Barbie Girl” on the album Aquarium. In the song, one band member impersonates Barbie, singing in a high-pitched, doll-like voice; another band member, calling himself Ken, entices Barbie to "go party."  Mattel sued MCA Records for trademark infringement and lost.  The court held this was a true parody protected by First Amendment and the song was a commentary "about Barbie and the values . . . she [supposedly] represents." Because the song was about Barbie, "the use of Barbie in the song title clearly is relevant to the underlying work.” More...

The news is out that beloved sailor Popeye became part of the public domain in the EU on January 1, 2009.  Before folks start scrambling to start reproducing Popeye t-shirts, posters, films and cartoon strips, we need to take a look at exactly what has become public domain.

January 1 of each year more creative works become part of the public domain because copyright protection for the work expired. 

In the EU copyright protection extends for the life of the author plus 70 years.  The Popeye character first appeared in comic strips in 1929 and in film in 1933.  Elzie Segar, the Illinois artist who created Popeye, died in 1938.  With Mr. Segar’s death in 1938, the term of copyright for his Popeye, Olive Oil and other characters expired December 31, 2008 in the EU.

Because of extension of the copyright term in the United States, Mr. Segar’s work is still protected.  In the United States the copyright term is generally life of the author plus 70 years for works created, registered or published on or after January 1, 1978.   If the work was created and published or registered prior to January 1, 1978 (such as Segar’s Popeye) and any necessary renewals were filed, the copyright term is for a total of 95 years from the year in which copyright was secured for the work.  The US Copyright law will protect Popeye until 2024. More...

I thought it would be fun to do an “IP Blog Round-Up” featuring some interesting legal issues with a bit of twist when it comes to the subject matter.  Click out to each blog for more details.  Enjoy!

Counterfeit Chic Blog:  Take a look at the legal disclaimers Neiman Marcus included in their holiday gift book regarding the life-size figures constructed out of Lego’s.

Likelihood of Confusion Blog:  You can’t leave your hat on … But make sure you have those cuffs and bowtie if you want to secure a trademark for the Chippendale’s dancer classic look.

Above The Law Blog:  Are Dr. Seuss’ lawyers really the Grinch that Stole Christmas or are they doing their job of protecting their client’s intellectual property? More...

On October 28, more than three years of settlement talks between Google and groups representing book publishers and authors came to an end.  The dispute has been over Google’s proposed Library Project.

The History:
The following excerpt is from Google’s December 14, 2005 press release  regarding the Library Project:  “As part of its effort to make offline information searchable online, Google, Inc. today announced that it is working with the libraries of Harvard, Stanford, the University of Michigan, and the University of Oxford as well as The New York Public Library to digitally scan books from their collections so that users worldwide can search them in Google.”  The press release further stated, “users searching with Google will see links in their search results page when there are books relevant to their query. Clicking on a title delivers a Google Print page where users can browse the full text of public domain works and brief excerpts and/or bibliographic data of copyrighted material. Library content will be displayed in keeping with copyright law.”

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It’s not often that enough exciting things happen in the world of copyright or even the broader category of intellectual property that we can give a week in review. Usually us practitioners are happy with a year in review. Congress, in the week preceding their recess, got busy on voting on copyright and other IP issues.

The Enforcement of Intellectual Property Rights Act of 2008: On September 28^th, the U.S. House of Representatives overwhelmingly passed S. 3325 (the PRO-IP Bill). Earlier in the week the bill had passed the Senate. The President is expected to sign the bill into law.

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