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Barbie® v. China Barbie

Note, to kink to this post, use this link: It seems that the use of the “®” in the title messes up the permalink for some browsers.

Perhaps inspired by Nautica’s® attempt to stop Nautica Thorn from registering her name as a trademark, Mattel, manufacturer of the Barbie® doll, just fired a shot across the bow of adult entertainer, China Barbie. (source).

The lawsuit said Global China Networks used a domain name containing the word “barbie” in a “bad faith attempt to profit from Mattel’s Barbie® trademarks” and had damaged Mattel’s good name.

The lawsuit asked the court to order the transfer of the domain name registration to Mattel, to award damages of up to $100,000 and to order that any profits Global China Networks achieved be given to Mattel.

According to the lawsuit, the offending Web site is registered to Global China Networks LLC and is operated by Terri Gibson, a Hollywood, Fla., resident. (source)

I have not seen the complaint yet, but it sounds like Mattel filed an ACPA claim under 15 U.S.C. § 1125(d), and a dilution claim under 15 § U.S.C. 1125(c)(1), as well as a good old fashioned infringement claim under 15 U.S.C. § 1125(a) (note, the complaint says 15 U.S.C. § 1114(a), but there is no such thing. That is the counterfeiting section of the Lanham Act. I presume that this was a mere typo in the complaint — we all do it sometimes) and a common law unfair competition count for good measure. (Complaint) (complaint linked from WSJ blog)

I’d prefer to read the complaint before commenting more, but My initial odds-making is that the ACPA claim is unlikely to succeed. The bad faith factors just don’t seem to stack up. Yes, the ACPA provides for remedies even for domain names that dilute famous marks, nevertheless, the nine factor (nonexclusive) test provide for by 15 U.S.C. § 1125(d)(1)(B) seems to fall in China Barbie’s favor.

The dilution claim, on the other hand, might be a little stronger. Dilution law is all over the place these days, and dilution claims are unpredictable. However, as a good friend of mine once said “in dilution, the [adult entertainer] always loses.” I wouldn’t agree that the adult entertainer “always loses,” but the deck is definitely stacked against her. China Barbie is going to have a fight on her hands with the 1125(c) count.

If anyone has a copy of the complaint, you can get some good karma by sending me a link to it.

With respect to the 15 U.S.C. § 1125(a) (pled as § 1114(a)) count, Mattel is going to need to prove some likelihood of confusion. I think that there is very little likelihood that anyone would seriously contend that they were confused as to the origin of the services provided by China Barbie. As far as the unfair competition count goes, perhaps I am being too dismissive, but since when does Mattel compete in the porn market?

China Barbie definitely has a fight ahead of her. Nevertheless, Mattel has not been all that successful in its attempts to place Barbie on intellectual lockdown. For example, in 2002, Mattel tried to rid the world of the Aqua song “Barbie Girl.” Mattel lost that case. Mattel also lost a case against artist Tom Forsythe who parodied barbie in a series of artistic works like Cutting Board Barbie and Barbie Enchilada (source). Mattel eventually had to reimburse Forsythe $1.8 million in attorneys’ fees. (source). The Case is here. Mattel also lost in a case with an artist who made “Bondage Barbie.” See Mattel, Inc. v. Pitt, 229 F. Supp. 2d 315, 324 (S.D.N.Y. 2002) (“The sale or display of “adult” dolls does not appear to be a use Mattel would likely develop or license others to develop.”).

Finally, in a recent case involving an Alberta, Canada sex shop called “Barbie’s Shop,” Mattel lost on jurisdictional grounds. (source). Mattel said that it considers the case to be ongoing, since they didn’t lose on the merits. Nevertheless, in that case, the owner of the shop’s name? Wait for it…. Barbie Anderson-Walley. Mattel’s reaction to that little “bad fact?”

We own the Barbie name, clothing and dolls. Even if your name happens to be Tommy, Ralph or Barbie, in some areas that’s already a trademark. (source)

My take on that one is that Mattel is lucky that it only lost on jurisdictional grounds. They should have been sanctioned for filing that case.

Mattel’s losing streak doesn’t exactly make them the Chicago Cubs of intellectual property enforcement though — for two reasons: 1) Everyone loves the Cubs, and 2) Mattel has a chance at winning this one. (Sorry Chicago, I love you, but this is not the year).

Here are some things that China Barbie will likely raise to increase her odds (in addition to simply arguing that there is no chance that the relevant consuming public will be confused).

Laches defense. China Barbie has been running her website and performing under this name since 2004. Until I see the complaint, I can’t fully comment on that issue. There is no statute of limitations in trademark cases, and the courts look to the s.o.l. on relevant state laws. I don’t know what that limitation is in New York, and I don’t have time to research it right now. Nevertheless, statute of limitations or not, there does appear to be some prejudice to China Barbie due to Mattel waiting so long to file. China Barbie has built up a name for herself for at least three years. I don’t know if that will be persuasive to the Southern District of New York, but it would be a worthwhile defense to raise.

Also, Mattel seems to be particularly vulnerable to parody defenses.

The word Barbie has come to be used as a derogatory slang term for a girl or woman who is considered shallow, most notably in the 1997 pop song Barbie Girl (see Parodies and lawsuits below). In July 1992 Mattel released Teen Talk Barbie, which spoke a number of phrases including “Will we ever have enough clothes?”, “I love shopping!”, and “Wanna have a pizza party?” Each doll was programmed to say four out of 270 possible phrases, so that no two dolls were likely to be the same. One of these 270 phrases was “Math class is tough!” Although only about 1.5% of all the dolls sold said the phrase, it led to criticism from the American Association of University Women. In October 1992 Mattel announced that Teen Talk Barbie would no longer say the phrase, and offered a swap to anyone who owned the doll. (source)

Now China Barbie’s expression might not fit as neatly into the parody defense as all those who have previously triumphed over Mattel. You do never know though. Is China Barbie trying to say something about Barbie®? Does China Barbie’s sexual expression criticize or mock Barbie®? Was that her intention? I haven’t interviewed her, so I don’t know. Nevertheless, Mattel isn’t racking up the victories when the parody defense is well-argued. I could see that one going her way, if she raises it.

Note: Andrew Contiguglia linked to this site from his Entertainment Law blog, where he wrote:

[M]aybe Mattel is just being vindictive of anything Chinese because of all the lead paint incidents (source)

Attorney Contiguglia might have a point. I hate to be too cynical, but before this suit hit the media, I’m sure that the top 50 search engine hits for “china” and “barbie” brought up stories and articles about the lead paint problem.

Not anymore.

If Mattel filed this suit to game the search engines, I’d have to hand them a dart and a laurel. A laurel for a magnificent machiavellian public relations coup, and a dart for misuse of the legal system.

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