Bad Barbie Dolls

When Utah- based photographer Tom Forsythe used Barbie dolls to assist him in making controversial political statements regarding his observations on society, he was sued by Mattel. The toymaker, which owns all rights to the extraordinarily popular toy, filed suit against the artist alleging that, among other things, his depiction of Barbie infringed the toymaker's copyright, trademark and trade dress rights. The American Civil Liberties Union, which defended the photographer, disagreed.

The problem began some time ago when Forsythe determined that the Barbie doll image stood for many of the things he felt were wrong with our society. According to the artist, Barbie embodies materialism and gender oppression. By depicting the doll wrapped in a tortilla doing domestic chores and in a variety of sexual poses, the artist felt that he could convey the message he wished in the most vivid and dramatic form possible. The photographs were made into, among other things, postcards for purposes of sale and distribution.

Mattel, which is very protective of its intellectual property, attempted to prevent distribution of the offending postcards and asked the court to order that the photographer's negatives be destroyed. The trial court refused, and the United States Court of Appeals for the Ninth Circuit agreed with this position. The court implied that Mattel would likely not succeed on a trial of the merits of the case since the photographer's defense of fair use and free speech rights were compelling.

This case presented the court with an interesting dilemma: When copyright and trademark rights collide head on with the protections afforded by the First Amendment of the United States Constitution and the fair- use exceptions to the copyright and trademark laws, which will prevail? In order to understand the problem, it is important to briefly examine the issues involved.

The trademark laws of the United States protect any name, symbol, logo or combination of these when used in connection with a product or service. Trademarks are used to identify the source (or origin) of goods or services.

Barbie is a protectable trademark owned by Mattel. Because this mark has been around so long and because the toy is so popular, the mark is strong. When one hears "Barbie" or "Barbie doll," a mental image is sparked, and the vast majority of Americans know exactly what was being described.

In addition, the shape of the popular toy has become so popular and so...