Tom Forsythe, Fondue a la Barbie
Tom Forsythe, Enchilada Barbie
Tom Forsythe’s “Food Chain Barbie,” is a series of photographs depicting Barbie with different vintage kitchen appliances.
In 1999, the Los Angeles Federal District Court dismissed the initial copyright, trademark and trade dress infringement claims Mattel, the manufacturers of Barbie, brought against Forsythe. The district court also denied Mattel’s subsequent claim for an injunction in 2000. In 2001, the San Francisco District Court denied Mattel’s application to subpoena the San Francisco Museum of Modern Art to produce all documents concerning Forsythe and his artwork. In 2001, the Los Angeles Federal District Court granted Forsythe’s motion for summary judgment, ruling that Forsythe’s use of the copyrighted work was fair use. The district court also dismissed Mattel’s trademark, trade dress and dilution claims. In 2004, Mattel appealed the district court’s grant of summary judgment in favor of Forsythe in regard to their copyright infringement claim. Mattel also appealed the district court’s dismissal of Mattel’s trademark, trade dress and dilution claims.
The Court of Appeals held that the copyright, trademark, trade dress and dilution claims were groundless, unreasonable and frivolous. The court awarded Forsythe $1,584,089 in attorney’s fees and $241,797.09 in costs.
The 9th Circuit affirmed the district court’s grant of summary judgment because they decided Forsythe’s use of Mattel’s copyrighted work represented fair use. The fair use exception to copyright law is determined by the following factors:
- Purpose and Character of the Use: Forsythe’s photographs sufficiently transformed the copyrighted work into a parody. These transformative and parodic qualities of the photographs outweigh Forsythe’s expectations of profit.
- Amount and Substantiality of the Portion of the Copyrighted Work Used: Forsythe’s use of the copyrighted material was reasonable because his parody altered the original work’s context creating a new work.
- Effect of the use upon the potential market for the original: It is improbable that Forsythe’s photographs would replace Mattel’s products on the market. It is also unlikely that Mattel would desire to create a work similar to either Forsythe’s photographs or desire to license works similar to Forsythe’s photographs.
Because Barbie has become a mark that is common usage in our vocabulary, its usage cannot be prevented by trademark law. Further, the use of Barbie in Forsythe’s photographs was a necessary to the parody.
Trade Dress Claim:
Forsythe’s use of the Barbie trade dress was nominative fair use because its use only made reference to Barbie. Forsythe did not excessively utilize the Barbie in his photographs and his use of Barbie did not suggest sponsorship by Mattel.
Forsythe’s photographs are parodies which are noncommercial and are not subject to dilution actions. Mattel cannot use trademark law to prevent the creation of parodies that reference Barbies.
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