More Barbie news: It's been a bad couple of weeks for Mattel. Today, the Ninth Circuit released its decision in Mattel, Inc. v. Walking Mt. Prods., Inc., No. 01-56695 (9th Cir. Dec. 29, 2003) (Pregerson, J.). The case concerns the limits of parody. As the court describes the dispute,

In the action before us, Plaintiff Mattel Corporation asks us to prohibit Defendant artist Thomas Forsythe from producing and selling photographs containing Mattel’s “Barbie” doll. Most of Forsythe’s photos portray a nude Barbie in danger of being attacked by vintage household appliances. Mattel argues that his photos infringe on their copyrights, trademarks, and trade dress.

Id. at 18170-71. (N.B. This case was argued immediately before Ellison v. Robertson; the oral argument was, to say the least, chaotic.)

The most critical "new" issue decided is the scope of "parody."

We decline to consider Mattel’s survey in assessing whether Forsythe’s work can be reasonably perceived as a parody. Parody is an objectively defined rhetorical device. Further, because parody is “a form of social and literary criticism,” it has “socially significant value as free speech under the First Amendment.” Dr. Suess, 109 F.3d at 1400. While individuals may disagree on the success or extent of a parody, parodic elements in a work will often justify fair use protection. See, e.g., Yankee Publ’g, Inc. v. News Am. Publ’g, Inc., 809 F. Supp. 267, 280 (S.D.N.Y. 1992) (“First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed.”). Use of surveys in assessing parody would allow majorities to determine the parodic nature of a work and possibly silence artistic creativity. Allowing majorities to determine whether a work is a parody would be greatly at odds with the purpose of the fair use exception and the Copyright Act. See generally Campbell, 510 U.S. at 583.

Id. at 18180 (italics in original, boldface emphasis added). This is important to authors for a very simple reason: those surveys are damned expensive, and deposing the experts who took them can be even more expensive. Thus, by making clear that whether a work is parodic (at least in the Ninth Circuit) is a matter of law for the judge, not subject to survey evidence, the creator of a parody that has been attacked as a copyright infringement just might be able to afford defending the parody as fair use.

The decision also reinforces the use of trademarks as exemplars (sometimes misleadingly termed "nominative use"), particularly when the marks have become common coin.

[W]hen 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.”

Id. at 18190 (citations omitted for clarity). As another example, consider Paul Simon's song "Kodachrome," in which he uses the term as a symbol for the relationship between actual events and photographic and other recall of the events. Although not a parody, the use of the Kodachrome mark in that context falls within this same reasoning—particularly as there is no disparagement of the mark or the product.

As I mused last Monday, the scales tip ever closer to the lawyers getting the most income from Barbie.