Failed Barbie infringement claim leaves Mattel with $1.8 million bill

In Mattel Inc v Walking Mountain Productions, the US District Court for the Central District of California has awarded the defendant $1.8 million in costs and attorney's fees in an action for copyright and trademark infringement, and dilution brought by Mattel in connection with the use of its Barbie doll in a series of photographs.

Tom Forsythe, the owner of Walking Mountain Productions, developed a series of 78 photographs entitled 'Food Chain Barbie'. The photographs depicted Barbie in various sexually provocative poses, in some cases alongside vintage kitchen appliances. Mattel brought a claim before the district court, arguing that the photographs and their title infringed Mattel's copyright, trademark and trade dress rights, and diluted its trademark and trade dress rights in its Barbie doll.

The court granted Walking Mountain's motion for summary judgment, holding that Forsythe's use of Mattel's copyrighted work was fair use. It found that Forsythe's use of Mattel's trademark and trade dress caused no likelihood of confusion that Mattel sponsored the photographs. The court also dismissed Mattel's dilution claims, finding that Forsythe's use had been non-commercial. Lastly, the court denied Forsythe's request for costs and attorney's fees, holding that he had not demonstrated that this was an "exceptional case" such that the court could award attorney's fees at its discretion. Both parties appealed to the Court of Appeals for the Ninth Circuit.

The Ninth Circuit upheld the district court's decision against Mattel, but vacated and remanded the denial of attorney's fees and costs to Forsythe.

On remand, the district court awarded $1.8 million in attorney's fees and costs to Forsythe. It stated that the parodic nature of Forsythe's work was obvious and as such Mattel's arguments lacked factual or legal support, making its copyright claims objectively unreasonable and frivolous, and its Lanham Act claims groundless. The court believed that Mattel "forced [Forsythe] into costly litigation to discourage him from using Barbie's image in his artwork".

Timothy Kelly and Patricia Werner, Fitzpatrick Cella Harper & Scinto, New York

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