Bratz dolls maker spoils prior rights holder's infringement claims

United States of America
In Art Attacks Ink LLC v MGA Entertainment Inc (Case 07-56110, September 16 2009), the US Court of Appeals for the Ninth Circuit has upheld the district court’s judgment as a matter of law for MGA Entertainment Inc, notwithstanding that a jury was unable to reach a verdict as to whether MGA was liable for trade dress and copyright infringement based on the design of its Bratz dolls.
Art Attacks Ink LLC creates t-shirts and other items with airbrushed designs, including its original designs of 'spoiled brats' characters featuring oversized eyes, large heads and feet, make up and bare midriffs. Due to its small size and the made-to-order nature of its business, Art Attacks primarily offers its products at one location at a time, such as malls, amusement centres and fairs. Art Attacks also operates a website with contact information for ordering its products. Through these combined efforts, the company sold about 2,000 'spoiled brats' t-shirts each year. It also obtained a copyright registration for its 'spoiled brats' characters. 
MGA’s Bratz dolls also feature large eyes, heavy make up, oversized heads and feet and bare midriffs. Based on these similarities, Art Attacks sued for copyright, trade dress and trademark infringement. A jury found for MGA on the trademark claim, but could not reach a verdict on the other claims. The district court granted MGA’s motion for judgment as a matter of law on the copyright and trade dress claims, and Art Attacks appealed. 
In finding for MGA on the trade dress claim, the Ninth Circuit held that Art Attacks had not met the threshold requirement of showing that its trade dress had acquired secondary meaning. Specifically, the Ninth Circuit disagreed with Art Attacks’s argument that a reasonable jury could have found secondary meaning based on:

  • purchaser perception;
  • advertising;
  • extent and exclusivity of use; and
  • actuation confusion. 
Addressing each of these types of evidence, the Ninth Circuit found that:
  • widespread access to Art Attacks’s characters based on the number of attendees at the fairs in which Art Attacks participated, in combination with testimony from a single declarant, did not establish purchaser association between the 'spoiled brats' characters and Art Attacks;
  • the advertising was not shown to be effective in creating an association between Art Attacks and its products;
  • Art Attacks made no showing of exclusivity during its long period of use, such that a reasonable jury could not have found secondary meaning based solely on five years of use; and
  • evidence of actual confusion consisting only of testimony from three people who were employees or personal friends of the founder of Art Attacks was insufficient. 
Based on these findings, the Ninth Circuit held that no reasonable jury could find that Art Attacks’s trade dress had acquired secondary meaning. Because this baseline requirement was not met, the court did not address the other prongs of a trade dress analysis.
The Ninth Circuit also held that no reasonable jury could find copyright infringement because Art Attacks had failed to show more than a bare possibility that MGA had access to the copyrighted designs.

Karin Segall, Foley & Lardner LLP, New York

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