June 28, 2004
Judge Says Artist Can Make Fun of Barbie
even years ago when Tom Forsythe, an artist and photographer, was searching for a subject for a new project, he settled on Barbie, ultimately producing a series of 78 photographic images of the wildly famous doll showing her nude, and sometimes posed provocatively, in or around various household appliances.
"I thought the pictures needed something that really said 'crass consumerism,' and to me, that's Barbie,'' Mr. Forsythe said. "The doll is issued in every possible role you can imagine and comes with every possible accessory for each and every role."
Mr. Forsythe developed a theme that he called "Barbie's power as a beauty myth." He displayed his photographs at art fairs in Utah and Kansas City, generating a few thousand dollars in sales but otherwise attracting little notice.
But his work drew the attention of Mattel Inc., which has manufactured the Barbie doll since 1959. In the summer of 1999, Mattel sued Mr. Forsythe for copyright and trademark infringement.
After a lengthy legal tussle, which included a series of appeals, a federal judge late last week instructed Mattel to pay Mr. Forsythe legal fees of more than $1.8 million.
"I couldn't have asked for a better result," said Mr. Forsythe, 46, of Kanab, Utah. "This should set a new standard for the ability to critique brands that are pervasive in our culture."
Mattel officials and the company's lawyers in the case, the Los Angeles firm of Quinn Emanuel Urquhart Oliver & Hedges, did not respond to telephone and e-mail messages on Sunday. Mattel can appeal the award, but the company would have to appeal to the Ninth Circuit Court of Appeals in San Francisco, which had earlier instructed the district court to consider awarding legal fees.
When Mattel filed suit in August 1999, Mr. Forsythe said, he searched about, often in vain, for legal counsel before the American Civil Liberties Union of Southern California and a team of lawyers from the San Francisco law firm of Howard, Rice, Nemerovski, Canady, Faulk & Rabkin agreed to take his case.
Mattel has aggressively protected the Barbie likeness and trademark. In December 1999, the toy maker sued Seal Press over the book "Adios, Barbie"; the publisher agreed to remove Barbie's name from the book's title and to remove images of the doll's clothing and accessories from its cover. Early last year, the Supreme Court upheld an earlier court's dismissal of a Mattel suit against the record label MCA after the recording group Aqua had released a song called "Barbie Girl" that Mattel said defamed Barbie with sexual innuendo.
In February 2001, Mattel lost a motion for a preliminary injunction in Mr. Forsythe's case. Mr. Forsythe's lawyers then moved for summary judgment, on the grounds that his work was parody, and thus protected under the fair use provisions of the Copyright Act.
In August 2001, a judge from Federal District Court in Los Angeles agreed, granting judgment in favor of Mr. Forsythe but not awarding him legal fees. Mattel and Mr. Forsythe both appealed, with the company seeking a different judgment and the artist seeking legal fees. In December 2003, a three-judge panel from the Ninth Circuit Court upheld the decision against Mattel and sent the matter of legal fees back to Judge Ronald S. W. Lew of the Los Angeles court, with instructions to reconsider the issue.
"Plaintiff had access to sophisticated counsel who could have determined that such a suit was objectively unreasonable and frivolous," Judge Lew wrote in his order. "Instead it appears plaintiff forced defendant into costly litigation to discourage him from using Barbie's image in his artwork. This is just the sort of situation in which this court should award attorneys fees to deter this type of litigation which contravenes the intent of the Copyright Act.''
The order also characterized Mattel's claim of trademark infringement as "groundless and unreasonable.''
Jonathan Zittrain, a professor at Harvard Law School who specializes in Internet and copyright law, said, "It's enough to give corporations with brands they want to protect and expand pause to consider whether to simply reflexively unleash the hounds the minute they see somebody doing something that relates to their brand of which they don't approve.
"It may send a signal that a 'take no prisoner' litigation strategy against the little guy has new risks for the plaintiff," he said.
The Copyright Act allows for tens of thousands of dollars in statutory damages per violation. Professor Zittrain said the risk of such damages "chills'' many defendants, even if they have a strong case.
"Maybe now when an angry C.E.O. picks up the phone to counsel and says 'sue this guy,' " he said, "instead of saluting and sending the bill, the lawyer may say 'I have to warn you, this could boomerang.' "