Monday, 5 January 2004
Mattel v. Walking Mountain Productions as a teaching case
This morning I finally got a chance to read the 9th Circuit's decision in Mattel v. Walking Mountain Productions [pdf], handed down last week. The decision affirms a District Court's grant of summary judgment to Tom Forsythe, the man selling photos of nude Barbie dolls being attacked by kitchen appliances. I think the 9th Circuit's opinion will make an excellent teaching tool in law school courses.
When I took courses on Copyright and Trademarks & Unfair Competition, my casebooks included a few cases that discussed the First Amendment, but I never felt like any case tied up all the loose ends for me. I think Mattel does this. The court did a nice job explaining the intersections between copyright, trademark, trade dress, the First Amendment, and fair use. However, it does not seem to have assumed that many laymen would read its opinion, so it did not spend an excessive amount of ink reasoning from first principles.
Despite its sympathy for free expression interests (which ultimately won the day), the court was not unmindful of the business realities in this case. It began its analysis where Mattel's real interest lay — the market value of its Barbie brand and the potential future value of Barbie dolls and authorized derivative works. However, after detailing the small income that Forsythe realized from his parodic photographs, the court gave us this gem: "Purchases by Mattel investigators comprised at least half of Forsythe's total sales." (page 5, note 3)
The court sprinkled its opinion with language that strongly reinforced the freedom of expression concerns at stake in a case like this. For example, on Mattel's copyright claim:
However one may feel about [Forsythe's] 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. (page 15)This was immediately followed by footnote 7:
Mattel strongly argues that Forsythe's work is not parody because he could have made his statements about consumerism, gender roles, and sexuality without using Barbie. Acceptance of this argument would severely and unacceptably limit the definition of parody. We do not make judgments about what objects an artist should choose for their art. For example, in [Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)], the Supreme Court found that hip-hop band 2-Live Crew's rendition of "Pretty Woman" was a parody because it targeted the original song and commented "on the naivete of the original of an earlier day, as a rejection of its sentiment that ignores the ugliness of street life and the debasement that it signifies." [Campbell,] 510 U.S. at 583. No doubt, 2-Live Crew could have chosen another song to make such a statement. Parody only requires that "the plaintiff's copyrighted work is at least in part the target of the defendant's satire," not that the plaintiff's work be the irreplaceable object for its form of social commentary. [Dr. Suess Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1400 (9th Cir. 1997).]
On the trademark infringement claim:
As we recently recognized in [Mattel, Inc. v. MCA Records, Inc. [pdf], 296 F.3d 894 (9th Cir. 2002), cert. denied, 123 S. Ct. 993 (2003)], 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. Where a mark assumes such cultural significance, First Amendment protections come into play. 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. [Internal quotation marks and citations ommitted.]
The court spent nearly a page distinguishing fair use from its First Amendment analysis on the trade dress claim (following the 2d Circuit's precedent in Rogers v. Grimaldi [pdf], 875 F.2d 994 (2d Cir. 1989)), in a long footnote (#14) on pages 20-21. I have never seen a court spend that much time on the fair use/First Amendment distinction. It was especially helpful in this case, after the court had analyzed the issues in light of Rogers:
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 [by the Mattel court]). 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." [Some internal citations omitted]
The court did a simiarly good job explaining the trademark dilution and trade dress infringement issues. I will not belabor my point here; the examples above show how good a teaching case this would be. The only issues that the court treated summarily were Mattel's state law claims, dismissing them on First Amendment grounds for the reasons it stated in other sections.
The major downside to using this case as a teaching tool is its length — forty pages. Fortunately, the last seven pages deal with procedural issues and attorney fees under the copyright and Lanham acts. These sections could easily be separated from the rest when discussing free expression issues.