Attorney Steve® Fair Use Insights - The Mattel Barbie Case [Fair Use Found]. 9th Circuit case law.
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Case citation: Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003)
Background: In the action before us, Plaintiff Mattel Corporation asks us to prohibit Defendant artist Thomas Forsythe from producing and selling photographs containing Mattel's "Barbie" doll. Most of Forsythe's photos portray a nude Barbie in danger of being attacked by vintage household appliances. Mattel argues that his photos infringe on their copyrights, trademarks, and trade dress. We have jurisdiction pursuant to 28 U.S.C. § 1291 and affirm the district court's grant of summary judgment to Forsythe, the Defendant.
Summary: The Ninth Circuit Court of Appeals found that the use of the Barbie trademark in a parody film titled "Barbie Girl" by the music group Aqua was a fair use. The court held that the song was a satire that commented on the cultural icon Barbie and that the unauthorized use of the trademark did not harm the value of the mark.
Does the Jury or the Court decide if Parody applies?
This was answered in the Mattel, Inc. Barbie case:
"The issue of whether a work is a parody is a question of law, not a matter of public majority opinion. See Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164; Dr. Seuss, 109 F.3d at 1400-01 ("[U]nless the plaintiff's copyrighted work is at least in part the target of the defendant's satire, then the defendant's work is not a `parody' in the legal sense. . . ." (emphasis added)). Forsythe correctly points out that Mattel presents no case law in support of its contention that the parodic nature of a defendant's work should be assessed using surveys and opinion testimony. Forsythe is further correct that every court to address the issue whether a defendant's work qualifies as a parody has treated this question as one of law to be decided by the court. E.g., Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164; Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 114-15 (2d Cir. 1998); Dr. Seuss, 109 F.3d at 1400-01."
What constitutes protected parody (non-copyright infringement)?
According to this case:
"A parody is a "literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule." Id. at 580, 114 S.Ct. 1164 (quoting AMERICAN HERITAGE DICTIONARY 1317 (3d. 1992)). For the purposes of copyright law, a parodist may claim fair use where he or she uses some of the "elements of a prior author's composition to create a new one that, at least in part, comments on that author's works." Id. The original work need not be the sole subject of the parody; the parody "may loosely target an original" as long as the parody "reasonably could be perceived as commenting on the original or criticizing it, to some degree." Id. at 580-81, 583, 114 S.Ct. 1164.
That a parody is in bad taste is not relevant to whether it constitutes fair use; "it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work]." Id. at 582-83, 114 S.Ct. 1164 (quoting Bleistein v.Donaldson Lithographing Co.,188 U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460 (1903))."
What states make up the 9th circuit?
A Look at the Four-Factor Test
In every case of alleged parody and for every fair use case in general, the courts will apply a four-factor test to determine if the use of the original copyrighted work is either fair use or if not, a copyright infringement. Here is how the 9th Circuit Court analyzed these factors in the Mattel Barbie case.
A. The Purpose and Character of the Use
The "purpose and character of use" factor in the fair use inquiry asks "to what extent the new work is transformative" and does not simply "supplant" the original work and whether the work's purpose was for or not-for-profit. Campbell, 510 U.S. at 579, 584, 114 S.Ct. 1164.
A work must add "something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Id. at 579, 114 S.Ct. 1164. The Supreme Court has recognized that parodic works, like other works that comment and criticize, are by their nature often sufficiently transformative to fit clearly under the fair use exception. Id. (recognizing that parody "has an obvious claim to transformative value"). In our circuit, a "parodist is permitted a fair use of a copyrighted work if it takes no more than is necessary to `recall' or `conjure up' the object of his parody." Dr. Seuss, 109 F.3d at 1400. A parodic work, however, like other potential fair uses, has to "work its way through the relevant factors, and be judged case by case, in light of the ends of copyright law." Campbell, 510 U.S. at 581, 114 S.Ct. 1164.
"[T]he threshold question[in the analysis of this first factor] . . . is whether a parodic character may reasonably be perceived." Id. at 582, 114 S.Ct. 1164. See also Dr. Seuss, 109 F.3d at 1400. Mattel argues that the district court erred in finding parody because a reasonable jury could conclude that Forsythe's works do not parody Mattel's Barbie. In support of this argument, Mattel offered into evidence a survey in which they presented individuals from the general public in a shopping mall with color photocopies of Forsythe's photographs and asked them what meaning they perceived. Relying on this survey, Mattel asserts that only some individuals may perceive parodic character.
The issue of whether a work is a parody is a question of law, not a matter of public majority opinion. See Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164; Dr. Seuss, 109 F.3d at 1400-01 ("[U]nless the plaintiff's copyrighted work is at least in part the target of the defendant's satire, then the defendant's work is not a `parody' in the legal sense. . . ." (emphasis added)). Forsythe correctly points out that Mattel presents no case law in support of its contention that the parodic nature of a defendant's work should be assessed using surveys and opinion testimony. Forsythe is further correct that every court to address the issue whether a defendant's work qualifies as a parody has treated this question as one of law to be decided by the court. E.g., Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164; Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 114-15 (2d Cir. 1998); Dr. Seuss, 109 F.3d at 1400-01.
We decline to consider Mattel's survey in assessing whether Forsythe's work can be reasonably perceived as a parody. Parody is an objectively defined rhetorical device. Further, because parody is "a form of social and literary criticism," it has "socially significant value as free speech under the First Amendment." Dr. Seuss, 109 F.3d at 1400. While individuals may disagree on the success or extent of a parody, parodic elements in a work will often justify fair use protection. See, e.g., Yankee Publ'g, Inc. v. News Am. Publ'g, Inc., 809 F.Supp. 267, 280 (S.D.N.Y. 1992) ("First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed."). Use of surveys in assessing parody would allow majorities to determine the parodic nature of a work and possibly silence artistic creativity. Allowing majorities to determine whether a work is a parody would be greatly at odds with the purpose of the fair use exception and the Copyright Act. See generally Campbell, 510 U.S. at 583, 114 S.Ct. 1164.
A parody is a "literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule." Id. at 580, 114 S.Ct. 1164 (quoting AMERICAN HERITAGE DICTIONARY 1317 (3d. 1992)). For the purposes of copyright law, a parodist may claim fair use where he or she uses some of the "elements of a prior author's composition to create a new one that, at least in part, comments on that author's works." Id. The original work need not be the sole subject of the parody; the parody "may loosely target an original" as long as the parody "reasonably could be perceived as commenting on the original or criticizing it, to some degree." Id. at 580-81, 583, 114 S.Ct. 1164. That a parody is in bad taste is not relevant to whether it constitutes fair use; "it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work]." Id. at 582-83, 114 S.Ct. 1164 (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460 (1903)).
In assessing whether Forsythe's photographs parody Barbie, Mattel urges us to ignore context — both the social context of Forsythe's work and the actual context in which Mattel's copyrighted works are placed in Forsythe's photographs. However, "[i]n parody, as in news reporting, context is everything." Id. at 588, 114 S.Ct. 1164 (citations omitted). We conclude that Forsythe's work may reasonably be perceived as a parody of Barbie.
Mattel, through impressive marketing, has established Barbie as "the ideal American woman" and a "symbol of American girlhood" for many. Mattel, Inc. v. MCA Records, Inc. (" MCA"), 296 F.3d 894, 898 (9th Cir. 2002), cert. denied, 537 U.S. 1171, 123 S.Ct. 993, 154 L.Ed.2d 912 (2003). As abundantly evidenced in the record, Mattel's advertisements show these plastic dolls dressed in various outfits, leading glamorous lifestyles and engaged in exciting activities. To sell its product, Mattel uses associations of beauty, wealth, and glamour.
Forsythe turns this image on its head, so to speak, by displaying carefully positioned, nude, and sometimes frazzled-looking Barbies in often ridiculous and apparently dangerous situations. His lighting, background, props, and camera angles all serve to create a context for Mattel's copyrighted work that transforms Barbie's meaning. Forsythe presents the viewer with a different set of associations and a different context for this plastic figure. In some of Forsythe's photos, Barbie is about to be destroyed or harmed by domestic life in the form of kitchen appliances, yet continues displaying her well-known smile, disturbingly oblivious to her predicament. As portrayed in some of Forsythe's photographs, the appliances are substantial and overwhelming, while Barbie looks defenseless. In other photographs, Forsythe conveys a sexualized perspective of Barbie by showing the nude doll in sexually suggestive contexts. It is not difficult to see the commentary that Forsythe intended or the harm that he perceived in Barbie's influence on gender roles and the position of women in society.
However, one may feel about his message — whether he is wrong or right, whether his methods are powerful or banal — his photographs parody Barbie and everything Mattel's doll has come to signify. Undoubtedly, one could make similar statements through other means about society, gender roles, sexuality, and perhaps even social class. But Barbie, and all the associations she has acquired through Mattel's impressive marketing success, conveys these messages in a particular way that is ripe for social comment.
Parody emerges from this "joinder of reference and ridicule." Campbell, 510 U.S. at 583, 114 S.Ct. 1164; cf. Dr. Seuss, 109 F.3d at 1401 (holding that defendants who wrote a poem titled "Cat NOT in the HAT" about the O.J. Simpson trial were not parodying Dr. Suess' original work because the stanzas had "no critical bearing on the substance or style of" the original). By developing and transforming associations with Mattel's Barbie doll, Forsythe has created the sort of social criticism and parodic speech protected by the First Amendment and promoted by the Copyright Act. We find that this factor weighs heavily in favor of Forsythe.
Another element of the first-factor analysis is whether the work's "purpose" was commercial or had a non-profit aim. Campbell, 510 U.S. at 584, 114 S.Ct. 1164. Clearly, Forsythe had a commercial expectation and presumably hoped to find a market for his art. However, as the Supreme Court noted in Campbell, even works involving comment and criticism "are generally conducted for profit in this country." Id. (quoting Harper Row, 471 U.S. at 592, 105 S.Ct. 2218.) On balance, Forsythe's commercial expectation does not weigh much against him. Given the extremely transformative nature and parodic quality of Forsythe's work, its commercial qualities become less important. Id. at 579, 105 S.Ct. 2218 (recognizing that the more "transformative the new work, the less will be the significance of the other factors").
B. Nature of the copyrighted work
The second factor in the fair use analysis "recognizes that creative works are `closer to the core of intended copyright protection' than informational and functional works." Dr. Seuss, 109 F.3d at 1402 (quoting Campbell, 510 U.S. at 586, 114 S.Ct. 1164). Mattel's copyrighted Barbie figure and face can fairly be said to be a creative work. However, the creativity of Mattel's copyrighted Barbie is typical of cases where there are infringing parodies. Campbell, 510 U.S. at 586, 114 S.Ct. 1164 ("[P]arodies almost invariably copy publicly known, expressive works."). As we have recognized in the past, "this [nature of the copyrighted work] factor typically has not been terribly significant in the overall fair use balancing." Dr. Seuss, 109 F.3d at 1402. In any event, it may weigh slightly against Forsythe.
C. Amount and substantiality of the portion used.
The third factor in the fair use analysis asks whether "`the amount and substantiality of the portion used in relation to the copyrighted work as a whole' are reasonable in relation to the purpose of copying." Id. (quoting 17 U.S.C. § 107(3)). We assess the "persuasiveness of a parodist's justification for the particular copying done," recognizing that the "extent of permissible copying varies with the purpose and character of the use." Campbell, 510 U.S. at 586-87, 114 S.Ct. 1164.
Mattel argues that Forsythe used the entirety of its copyrighted work and that this factor weighs against him. Mattel contends that Forsythe could have used less of the Barbie figure by, for example, limiting his photos to the Barbie heads.
First, Forsythe did not simply copy the work "verbatim" with "little added or changed." Id. at 587-88, 114 S.Ct. 1164. A verbatim copy of Barbie would be an exact three-dimensional reproduction of the doll. Forsythe did not display the entire Barbie head and body in his photographs. Parts of the Barbie figure are obscured or omitted depending on the angle at which the photos were taken and whether other objects obstructed a view of the Barbie figure.
Second, Mattel's argument that Forsythe could have taken a lesser portion of its work attempts to benefit from the somewhat unique nature of the copyrighted work in this case. Copyright infringement actions generally involve songs, video, or written works. See, e.g., Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622 (9th Cir. 2003) (use of copyrighted Elvis Presley-related video clips, photographs, and music); Los Angeles News Serv., 305 F.3d at 924 (use of a few seconds of copyrighted video footage by a news service); Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110 (9th Cir. 2000) (reproduction and distribution by nonprofit organization of an entire copyrighted work), cert. denied, 532 U.S. 958, 121 S.Ct. 1486, 149 L.Ed.2d 373 (2001); Dr. Seuss, 109 F.3d at 1394 (use of Dr. Suess's "Cat in the Hat" format in written work about the O.J. Simpson trial). Because parts of these works are naturally severable, the new work can easily choose portions of the original work and add to it. Here, because the copyrighted material is a doll design and the infringing work is a photograph containing that doll, Forsythe, short of severing the doll, must add to it by creating a context around it and capturing that context in a photograph. For our purposes, Forsythe's use is no different from that of a parodist, taking a basic melody and adding elements that transform the work. See Campbell, 510 U.S. at 589, 114 S.Ct. 1164 (noting that 2 Live Crew's rendition of "Pretty Woman" did not approach verbatim copying because, even though 2 Live Crew may have taken the most recognizable portion of the work, it had added "scraper" noises and overlays to the music). In both Forsythe's use of the entire doll and his use of dismembered parts of the doll, portions of the old work are incorporated into the new work but emerge imbued with a different character.
Moreover, Forsythe was justified in the amount of Mattel's copyrighted work that he used in his photographs. Mattel's argument that Forsythe could have used a lesser portion of the Barbie doll is completely without merit and would lead to absurd results. We do not require parodic works to take the absolute minimum amount of the copyrighted work possible. As the Supreme Court stated in Campbell, "[o]nce enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the [work's] overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original." Id. at 587, 114 S.Ct. 1164. We conclude that the extent of Forsythe's copying of the Barbie figure and head was justifiable in light of his parodic purpose and medium used. This factor also weighs in his favor.
D. Effect of the use upon potential market
The fourth factor asks whether actual market harm resulted from the defendant's use of the plaintiff's protected material and whether "unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market" for the original or its derivatives. Id. at 590, 114 S.Ct. 1164 (quoting 3 Melville B. Nimmer David Nimmer, Nimmer on Copyright § 13.05[A](4), at 13-102.61 (1993)). This inquiry attempts to strike a balance between
the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied. The less adverse effect that an alleged infringing use has on the copyright owner's expectation of gain, the less public benefit need be shown to justify the use.
Mattel argues that Forsythe's work could lead to market harm by impairing the value of Barbie itself, Barbie derivatives, and licenses for use of the Barbie name and/or likeness to non-Mattel entities. Because of the parodic nature of Forsythe's work, however, it is highly unlikely that it will substitute for products in Mattel's markets or the markets of Mattel's licensees. In Campbell, the Court clearly stated, "as to parody pure and simple, it is more likely that the new work will not affect the market for the original in a way cognizable under this factor." Campbell, 510 U.S. at 591, 114 S.Ct. 1164. Nor is it likely that Mattel would license an artist to create a work that is so critical of Barbie. "[T]he unlikelihood that creators of imaginative works will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market." Id. at 592, 114 S.Ct. 1164.
As to Mattel's claim that Forsythe has impaired Barbie's value, this fourth factor does not recognize a decrease in the value of a copyrighted work that may result from a particularly powerful critical work. Id. at 593, 114 S.Ct. 1164 ("The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market. . . ."). We recognize, however, that critical works may have another dimension beyond their critical aspects that may have effects on potential markets for the copyrighted work. Id. at 592, 114 S.Ct. 1164 (recognizing that the new work "may have a more complex character, with effects not only in the arena of criticism but also in protectable markets for derivative works"). Thus, we look more generally, not only to the critical aspects of a work, but to the type of work itself in determining market harm. Id. at 593, 114 S.Ct. 1164 (looking beyond the critical aspect of 2 Live Crew's rap rendition of "Pretty Woman" to the derivative market for rap music). Given the nature of Forsythe's photographs, we decline Mattel's invitation to look to the licensing market for art in general. Forsythe's photographs depict nude and often sexualized figures, a category of artistic photography that Mattel is highly unlikely to license. "The existence of this potential market cannot be presumed." Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 972(9th Cir. 1992), cert. denied, 507 U.S. 985, 113 S.Ct. 1582, 123 L.Ed.2d 149 (1993).
In a case almost identical to this one, Mattel, Inc. v. Pitt (" Pitt"), 229 F.Supp.2d 315, 321-22 (S.D.N.Y. 2002), the Southern District Court of New York found no danger of potential market harm to derivative uses. In Pitt, Mattel brought a copyright infringement suit against Susanne Pitt, an artist who sold and designed a line of figures called "Dungeon Dolls." These dolls were essentially Barbie dolls, physically altered, clothed in sadomasochistic attire, and placed in contexts with like themes. Id. Having found the works sufficiently transformative, the Pitt court concluded that potential market harm was improbable because Mattel was unlikely to develop or license others to develop a product in the "adult" doll market. Id. at 324.
Forsythe's work could only reasonably substitute for a work in the market for adult-oriented artistic photographs of Barbie. We think it safe to assume that Mattel will not enter such a market or license others to do so. As the Court noted in Campbell, "the market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop." 510 U.S. at 592, 114 S.Ct. 1164.
Finally, the public benefit in allowing artistic creativity and social criticism to flourish is great. The fair use exception recognizes this important limitation on the rights of the owners of copyrights. No doubt, Mattel would be less likely to grant a license to an artist that intends to create art that criticizes and reflects negatively on Barbie's image. It is not in the public's interest to allow Mattel complete control over the kinds of artistic works that use Barbie as a reference for criticism and comment.
Having balanced the four § 107 fair use factors, we hold that Forsythe's work constitutes fair use under § 107's exception. His work is a parody of Barbie and highly transformative. The amount of Mattel's figure that he used was justified. His infringement had no discernable impact on Mattel's market for derivative uses. Finally, the benefits to the public in allowing such use — allowing artistic freedom and expression and criticism of a cultural icon — are great. Allowing Forsythe's use serves the aims of the Copyright Act by encouraging the very creativity and criticism that the Act protects. Kelly, 336 F.3d at 819-20. We affirm the district court on its grant of summary judgment on Mattel's copyright infringement claims.
We now address whether the district court erred in granting summary judgment in favor of Forsythe on Mattel's claims of trademark and trade dress infringement and dilution. As above, we review de novo a grant of summary judgment. See Oliver, 289 F.3d at 626.
The limited purpose of trademark protections set forth in the Lanham Trade-Mark Act, 15 U.S.C. § 1051 et. seq., is to "avoid confusion in the marketplace" by allowing a trademark owner to "prevent others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner." MCA, 296 F.3d at 900. Trademark law aims to protect trademark owners from a false perception that they are associated with or endorse a product. See Cairns, 292 F.3d at 1149-50. Generally, to assess whether a defendant has infringed on a plaintiff's trademark, we apply a "likelihood of confusion" test that asks whether use of the plaintiff's trademark by the defendant is "likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection, or association" of the two products. Id. at 1149 (quoting 15 U.S.C. § 1125(a)(1)(A)).
As we recently recognized in MCA, however, when marks "transcend their identifying purpose" and "enter public discourse and become an integral part of our vocabulary," they "assume a role outside the bounds of trademark law." 296 F.3d at 900. Where a mark assumes such cultural significance, First Amendment protections come into play. Id. In these situations, "the trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function." Id. See also New Kids on the Block v. News Am. Publ'g Inc., 971 F.2d 302, 307 (9th Cir. 1992).
As we determined in MCA, Mattel's "Barbie" mark has taken on such a role in our culture. 296 F.3d at 898-99. In MCA, Mattel brought an identical claim against MCA Records, producers of a song entitled "Barbie Girl" that contained lyrics that parodied and mocked Barbie. Id. at 894. Recognizing that First Amendment concerns in free expression are particularly present in the realm of artistic works, we rejected Mattel's claim. In doing so, we adopted the Second Circuit's First Amendment balancing test for applying the Lanham Act to titles of artistic works as set forth in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). MCA, 296 F.3d at 902.
The Rogers balancing test requires courts to construe the Lanham Act "to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Rogers, 875 F.2d at 999 (emphasis added). Accordingly, the Rogers test prohibits application of the Lanham Act to titles of artistic works unless the title "has no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Id.
Application of the Rogers test here leads to the same result as it did in MCA. Forsythe's use of the Barbie mark is clearly relevant to his work. See MCA, 296 F.3d at 902 ("[T]he use of Barbie in the song title clearly is relevant to the underlying work, namely, the song itself."). The Barbie mark in the titles of Forsythe's works and on his website accurately describe the subject of the photographs, which in turn, depict Barbie and target the doll with Forsythe's parodic message. See id. ("[T]he song is about Barbie and the values [the defendants] claim she represents.") The photograph titles do not explicitly mislead as to Mattel's sponsorship of the works. See id.
("The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. The only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity." (emphasis in original)).
Accordingly, the public interest in free and artistic expression greatly outweighs its interest in potential consumer confusion about Mattel's sponsorship of Forsythe's works.
B. Trade dress
Mattel also claims that Forsythe misappropriated its trade dress in Barbie's appearance, in violation of the Lanham Act, 15 U.S.C. § 1125. Mattel claims that it possesses a trade dress in the Superstar Barbie head and the doll's overall appearance. The district court concluded that there was no likelihood that the public would be misled into believing that Mattel endorsed Forsythe's photographs despite Forsythe's use of the Barbie figure.
Arguably, the Barbie trade dress also plays a role in our culture similar to the role played by the Barbie trademark — namely, symbolization of an unattainable ideal of femininity for some women. Forsythe's use of the Barbie trade dress, therefore, presumably would present First Amendment concerns similar to those that made us reluctant to apply the Lanham Act as a bar to the artistic uses of Mattel's Barbie trademark in both MCA and this case. But we need not decide how the MCA/Rogers First Amendment balancing might apply to Forsythe's use of the Barbie trade dress because we find, on a narrower ground, that it qualifies as nominative fair use.
In the trademark context, we recently held that a defendant's use is classic fair use where "a defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product." Cairns, 292 F.3d at 1151 (emphasis in original). In contrast, a defendant's use of a plaintiff's mark is nominative where he or she "used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product." Id. (emphasis in original). The goal of a nominative use is generally for the "purposes of comparison, criticism [or] point of reference." New Kids on the Block, 971 F.2d at 306. These two mutually exclusive forms of fair use are equally applicable here in the trade dress context.
Applying these fair use standards to the trade dress context, we hold that a defendant's use is classic fair use where the defendant has used the plaintiff's dress to describe or identify the defendant's own product and not at all to describe or identify the plaintiff's product. Likewise, a defendant's use is nominative where he or she used the plaintiff's dress to describe or identify the plaintiff's product, even if the defendant's ultimate goal is to describe or identify his or her own product.
Forsythe's use of the Barbie trade dress is nominative. Forsythe used Mattel's Barbie figure and head in his works to conjure up associations of Mattel while at the same time to identify his own work, which is a criticism and parody of Barbie. See Cairns, 292 F.3d at 1151. Where use of the trade dress or mark is grounded in the defendant's desire to refer to the plaintiff's product as a point of reference for the defendant's own work, a use is nominative.
Fair use may be either nominative or classic. Id. at 1150. We recognize a fair use defense in claims brought under § 1125 where the use of the trademark "does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source." New Kids on the Block, 971 F.2d at 306. Thus, we recently reiterated that, in the trademark context, nominative use becomes nominative fair use when a defendant proves three elements:
First, the plaintiff's product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the plaintiff's product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
Forsythe's use easily satisfies the first element; his use of the Barbie figure and head are reasonably necessary in order to conjure up the Barbie product in a photographic medium. See id. at 1153 ("[T]here is no substitute for Franklin Mint's use of Princess Diana's likeness on its Diana-related products. . . ."). It would have been extremely difficult for Forsythe to create a photographic parody of Barbie without actually using the doll.
Forsythe also satisfies the second element, which requires that a defendant only use so much of a trademark or trade dress as is reasonably necessary. As we recognized in Cairns, "[w]hat is `reasonably necessary to identify the plaintiff's product' differs from case to case." Id. at 1154. Where identification "of the defendant's product depends on the description [or identification] of the plaintiff's product, more use of the plaintiff's trademark" or trade dress is reasonably necessary. Id. Given the photographic medium and Forsythe's goal of representing the social implications of Barbie, including issues of sexuality and body image, Forsythe's use of the Barbie torso and head is both reasonable and necessary. It would be very difficult for him to represent and describe his photographic parodies of Barbie without using the Barbie likeness.
Though a "closer call than the first two elements" of the nominative fair use analysis, id. at 1155, the final element — that the user do nothing that would, in conjunction with use of the mark or dress, suggest sponsorship or endorsement by the trademark or trade dress holder — is satisfied here and weighs in Forsythe's favor. This element does not require that the defendant make an affirmative statement that their product is not sponsored by the plaintiff. Id.
Mattel attempts to argue that Forsythe suggested sponsorship by asserting to potential consumers that one of his photographs "hangs on the wall of the office of Mattel's President of Production," to whom Forsythe referred as "Joe Mattel."
One of the purchasers of Forsythe's work apparently told Forsythe that he had given the work to this Mattel senior executive as a gift. Forsythe repeated this fact in certain letters to galleries and friends. Forsythe claims that he had no intention of suggesting sponsorship and that he meant the statement humorously. In virtually every promotional packet in which Forsythe mentioned "Joe Mattel," he also included a copy of his biography in which he identified himself as "someone criticizing Mattel's Barbie and the values for which it stands." The letters in the packets asserted that Forsythe was attempting to "deglamourize Barbie," "skewer the Barbie myth," and expose an "undercurrent of dissatisfaction with consumer culture." A similar mission statement was prominently featured on his website.
The rest of the materials in these promotional packets sent to galleries reduce the likelihood of any consumer confusion as to Mattel's endorsement of Forsythe's work. Any reasonable consumer would realize the critical nature of this work and its lack of affiliation with Mattel. Critical works are much less likely to have a perceived affiliation with the original work. New Kids on the Block, 971 F.2d at 309 (finding no suggested sponsorship in part because a poll in a magazine regarding the popularity of the New Kids asked if the New Kids had become a "turn-off"). Moreover, even if "Joe Mattel" existed, we question whether possession by a third-party passive recipient of an allegedly infringing work can suggest sponsorship.
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We hold that Forsythe's use of Mattel's Barbie qualifies as nominative fair use. All three elements weigh in favor of Forsythe. Barbie would not be readily identifiable in a photographic work without use of the Barbie likeness and figure. Forsythe used only so much as was necessary to make his parodic use of Barbie readily identifiable, and it is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated with his work. The district court's grant of summary judgment to Forsythe on Mattel's trade dress infringement claim was, therefore, proper.
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