I'm a Barbie girl, in an IP disputes world: how the Barbie brand protected IP
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A short excursion into the IP world of Barbie In its development, the Barbie brand has gone through a long history from the first doll to a popular Hollywood film. Barbie, fully Barbara Millicent Roberts, is a plastic doll 29 cm tall. Barbie was first introduced to the public on 9 March 1959 by Mattel, Inc. a Southern California toy company. The first prototype of the doll was patented in 1961, followed by other patents and trade mark registrations. Today there are 23 trademarks registered in the EU (and over 300 worldwide) protecting BARBIE and various versions of the logo and related names. |
Obviously, the successful establishment of the Barbie brand would not have been possible without trademarks, patents and copyrights, which form an important part of the brand's IP portfolio.
Barbie is a great example of how properly registered intellectual property rights can protect a brand for many years, as well as help develop a product and achieve commercial success. And of course, there have been conflicts and litigation along the way. Let us tell you about the most interesting moments from the history of legal defence of the BARBIE brand.
Mattel v. MCA Records
The most famous conflict involving the Barbie brand was with MCA Records over the creation of the hit song "Barbie Girl" by the band Aqua in 1997*. Mattel filed claims for infringement of the Barbie trademark, to which MCA responded with a counterclaim, including defamation, in response to comments from Mattel to MCA along the lines of "robber", "crime" and "theft".
Ultimately, the dispute did not end until 2002, when the U.S. Court of Appeals (Ninth Circuit), among other things, applied the well-known legal test of the Rogers case and held that the song "Barbie Girl" was protected as a parody under the "fair use"* doctrine, including non-commercial use, and the First Amendment to the Constitution's free speech clause. At the same time, the court also dismissed MCA's counterclaim and concluded the case by succinctly stating «The parties are advised to chill».
Barbie v. Bratz
In 2004, Mattel came into conflict with MGA Entertainment*, the creators of Bratz dolls. Mattel's position was that a former employee (Bryant) developed the concept (sketches and drawings) of Bratz dolls while working for Mattel, accordingly, all rights to the dolls were transferred to Mattel as an official work and MGA's use of Bratz dolls violated Mattel's copyright and trade secret regime. As a result, Mattel's claims were satisfied in court in 2008 and the company was awarded compensation in the amount of $10 million for copyright infringement, in addition, the court banned the production and sale of Bratz dolls.
However, in 2010, MGA initiated a second lawsuit alleging misappropriation of trade secrets by Mattel because the company (its employees) had engaged in various schemes to gather confidential information about competing products and marketing strategies. For example, the court stated that Mattel employees improperly obtained competitive information, such as obtaining price lists, promotional plans, and features of competitive products at toy fairs under false pretences. As a result of the case, MGA was awarded approximately $88 million in damages.
This example shows the importance of building relationships with employees and maintaining trade secrets.
Mattel v. Rap Snacks
In June 2022, Rap Snacks partnered with Nicki Minaj to launch a line of "Minaj Barbie-Que Honey Truffle Potato Chips" with a reference to Mattel's trademark. A month after the massive product launch, Mattel filed a lawsuit claiming the product name infringes on BARBIE' s trademark rights*.
After initiating litigation a month later, Mattel dropped the lawsuit*, as the dispute between the parties was settled amicably on the condition that the Rap Snacks product be withdrawn from sale.
If we compare this conflict with the first case of Mattel v. MCA Records. MCA Records, the strategy of defence based on the doctrine of "fair use" has no prospect in this case, since the use of another's trade mark with an actual commercial product (in particular, chips) requires the authorisation of the right holder.
In our legal practice, we often protect brands using trade marks or copyright tools. However, as in the BARBIE examples, the position of the trade mark owner is not always so clear-cut. And it is not only the US, similar rules exist in one form or another in the EU, UK, Australia, CIS countries and Asia. Sometimes the conditions of competition (timing, markets, financial positions of players) and the presence of conflicting designations (domain names, copyright objects, protected elements of products, etc.) of competitors make it really difficult to protect a brand even in the presence of trademarks. Nevertheless, the BARBIE story is an excellent example of a company taking a proactive stance towards its IP portfolio, which ultimately results in maintaining its dominant position in the market regardless of competitors' actions.
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