Mattel Inc. v. Walking Mountain Productions
| Decision Date | 29 December 2003 |
| Docket Number | No. 01-57193.,No. 01-56695.,01-56695.,01-57193. |
| Citation | 353 F.3d 792 |
| Parties | MATTEL INC., a Delaware Corporation, Plaintiff-Appellant, v. WALKING MOUNTAIN PRODUCTIONS, a California Business Entity; Tom Forsythe, an individual d/b/a Walking Mountain Productions, Defendants-Appellees. Mattel Inc., a Delaware Corporation, Plaintiff-Appellee, v. Walking Mountain Productions, a California Business Entity; Tom Forsythe, an individual d/b/a Walking Mountain Productions, Defendants-Appellants. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Adrian M. Pruetz (argued), Michael T. Zeller, Edith Ramirez and Enoch Liang, Quinn Emanuel Urquhart Oliver & Hedges, LLP, Los Angeles, California, for the plaintiff-appellant-cross-appellee.
Annette L. Hurst (argued), Douglas A. Winthrop and Simon J. Frankel, Howard, Rice, Nemerovski, Canady, Falk & Rabkin, APC, San Francisco, California, and Peter J. Eliasberg, ACLU, Los Angeles, California, for the defendants-appellees-cross-appellants.
Annette L. Hurst, Douglas A. Winthrop and Simon J. Frankel, Howard, Rice, Nemerovski, Canady, Falk & Rabkin, APC, San Francisco, California, for non-party San Francisco Museum of Modern Art Appeal from the United States District Court for the Central District of California; Ronald S.W. Lew, District Judge, Presiding and United States District Court for the Northern District of California; William H. Alsup, District Judge, Presiding. C.D. Cal. Nos. CV-99-08543-RSWL, N.D. Cal. No. CV-01-0091 Misc. WHA, C.D. Cal. No. CV-99-08543-RSWL, N.D. Cal. No. CV-01-0091 Misc. WHA.
Before: Harry PREGERSON and Sidney R. THOMAS, Circuit Judges, and Louis F. OBERDORFER, Senior District Judge.*
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. We have jurisdiction pursuant to 28 U.S.C. § 1291 and affirm the district court's grant of summary judgment to Forsythe.
Thomas Forsythe, aka "Walking Mountain Productions," is a self-taught photographer who resides in Kanab, Utah. He produces photographs with social and political overtones. In 1997, Forsythe developed a series of 78 photographs entitled "Food Chain Barbie," in which he depicted Barbie in various absurd and often sexualized positions.1 Forsythe uses the word "Barbie" in some of the titles of his works. While his works vary, Forsythe generally depicts one or more nude Barbie dolls juxtaposed with vintage kitchen appliances. For example, "Malted Barbie" features a nude Barbie placed on a vintage Hamilton Beach malt machine. "Fondue a la Barbie" depicts Barbie heads in a fondue pot. "Barbie Enchiladas" depicts four Barbie dolls wrapped in tortillas and covered with salsa in a casserole dish in a lit oven.
In his declaration in support of his motion for summary judgment, Forsythe describes the message behind his photographic series as an attempt to "critique[] the objectification of women associated with [Barbie], and [][to] lambast[] the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies." He explains that he chose to parody Barbie in his photographs because he believes that "Barbie is the most enduring of those products that feed on the insecurities of our beauty and perfection-obsessed consumer culture." Forsythe claims that, throughout his series of photographs, he attempts to communicate, through artistic expression, his serious message with an element of humor.
Forsythe's market success was limited. He displayed his works at two art festivals — the Park City Art Festival in Park City, Utah, and the Plaza Art Fair in Kansas City, Missouri.2 He promoted his works through a postcard, a business card, and a website. Forsythe printed 2000 promotional postcards depicting his work, "Barbie Enchiladas," only 500 of which were ever circulated. Of those that were circulated, some were distributed throughout his hometown of Kanab and some to a feminist scholar who used slides of Forsythe's works in her academic presentations. He also sold 180 of his postcards to a friend who owned a book store in Kanab so she could resell them in her bookstore and sold an additional 22 postcards to two other friends. Prior to this lawsuit, Forsythe received only four or five unsolicited calls inquiring about his work. The "Food Chain Barbie" series earned Forsythe total gross income of $3,659.3
Forsythe also produced 1,000 business cards which depicted "Champagne Barbie." His name and self-given title "Artsurdist" were written on the card. He used these cards at fairs and as introductions to gallery owners.
Finally, Forsythe had a website on which he depicted low resolution pictures of his photographs. The website was not configured for online purchasing. "Tom Forsythe's Artsurdist Statement," in which he described his intent to critique and ridicule Barbie, was featured on his website. His website also contained a prominent link to his biography.
On August 23, 1999, Mattel filed this action in the United States District Court for the Central District of California (the "Los Angeles federal district court") against Forsythe, alleging that Forsythe's "Food Chain Barbie" series infringed Mattel's copyrights, trademarks, and trade dress. Forsythe filed a motion to dismiss Mattel's First Amended Complaint, which was granted with leave to amend. Mattel filed a Second Amended Complaint, and Forsythe again moved for dismissal. The motion was granted in part; the court dismissed with prejudice Mattel's Eleventh Claim for federal trade libel.
On August 11, 2000, Mattel moved for a preliminary injunction. The district court denied the motion; we summarily affirmed. Mattel, Inc. v. Walking Mountain Prods., No. 00-56733, 4 Fed.Appx. 400, 2001 WL 133145(9th Cir. Feb.15, 2001) (unpublished).
During discovery, Forsythe served on Mattel the Federal Rule of Civil Procedure 26(a)(2)(B) expert witness report of Dr. Douglas Nickel, an expert on art history and curator of photography at the San Francisco Museum of Modern Art (the "SFMOMA"). Nickel's report focused on the traditions of twentieth century artists, in which Forsythe's works were properly understood.
On April 30, 2001, after receiving that report, Mattel subpoenaed Dr. Nickel to appear for a deposition and to produce certain documents. On or about May 15, 2001, Mattel served a Federal Rule of Civil Procedure 30(b)(6) subpoena on the SFMOMA (the "Subpoena" or "SFMOMA Subpoena"), a non-party to this action.4 The Subpoena demanded all documents relating to Forsythe and his works, all documents relating to Mattel or Barbie, and all documents relating to the SFMOMA's "policy or practice relating to the third-party copying, reproduction, or photographing" of works in which the SFMOMA had a proprietary interest. The Subpoena also demanded that the SFMOMA produce a witness or witnesses to testify at deposition on various topics including the following: licensing of artworks owned by SFMOMA, including licensed products, royalty rates, and the advertising markets, and sales channels for such products and "the number, identity, nature and results of lawsuits or other legal action taken ... or cease and desist letters sent by" the SFMOMA over the past five years related to reproduction of artwork owned by the SFMOMA. On May 24, 2001, the SFMOMA served written objections to the Subpoena on Mattel.
On May 30, 2001, Mattel filed an ex parte application in the United States District Court for the Northern District of California (the "San Francisco federal district court") to enforce the Subpoena and to compel the SFMOMA to produce documents and its representative(s) for a deposition. Mattel claimed that the Subpoena would aid discovery in Mattel's action against Forsythe. The SFMOMA opposed the ex parte application.
On June 4, 2001, the San Francisco federal district court denied the application, quashed the Subpoena, and held that it would award the SFMOMA's counsel fees and expenses incurred in opposing the application. The parties were unable to agree on fees, and the SFMOMA's counsel submitted an itemized statement of fees and costs. The court subsequently issued a written "Order Determining Amount of Attorney's Fees," denying the Application, quashing the Subpoena, and sanctioning Mattel.
On July 16, 2001, Forsythe moved for summary judgment in the Los Angeles federal district court. He also moved to exclude all or portions of the reports and testimony of Mattel's experts (Boles, Kinrich, Lynde, Marylander, and Schwartz) and a videotape of him destroying his Barbie collection.5 Mattel filed a cross-motion for summary judgment on some of Forsythe's affirmative defenses.
On August 22, 2001, the Los Angeles federal district court granted Forsythe's motion for summary judgment. The district court held that Forsythe's use of Mattel's copyrighted work was fair use. The court found that Forsythe's use of Mattel's trademark and trade dress caused no likelihood of confusion as to Mattel's sponsorship of Forsythe's works. The court dismissed Mattel's trademark dilution claim because it found that Forsythe's use had been "noncommercial." The court further found that Mattel's remaining state claims failed as a matter of law.
On Forsythe's motion to exclude the reports and testimony of Mattel's experts and to exclude Forsythe's videotape, the court excluded the report and testimony of Mattel expert Boles and Forsythe's "execution" videotape because they were irrelevant. The court, however, denied Forsythe's motion to exclude the reports and testimony of Mattel...
To continue reading
Request your trial
-
Stone Brewing Co. v. Millercoors LLC
...AMF Inc. v. Sleekcraft Boats , 599 F.2d 341, 348-49 (9th Cir. 1979), abrogated in part on other grounds , Mattel, Inc. v. Walking Mountain Prod. , 353 F.3d 792 (9th Cir. 2003) ). The eight factors are: (1) strength of the mark , (2) proximity of the goods , (3) similarity of the marks , (4)......
-
Rimini St., Inc. v. Oracle Int'l Corp.
...Cir. 1989) ). "[W]hether a work is transformative is a question of law." Google , 886 F.3d at 1199 (citing Mattel, Inc. v. Walking Mountain Prod. , 353 F.3d 792, 801 (9th Cir. 2003) ). Here, the Court cannot find that Rimini's new work was transformative. While Rimini created new code to cr......
-
Serova v. Sony Music Entm't
...L.Ed.2d 41 [attributing a made-up, salacious interview to a nationally known minister was protected parody]; Mattel Inc. v. Walking Mt. Prods. (9th Cir. 2003) 353 F.3d 792, 812 [concluding "[p]arody is a form of noncommercial expression if it does more than propose a commercial transaction"......
-
Capri Sun GmbH v. American Beverage Corporation
...equated with likelihood of confusion, the two inquiries are separate."), abrogated on unrelated ground by Mattel, Inc. v. Walking Mountain Prods. , 353 F.3d 792 (9th Cir. 2003). The Fourth Circuit, by contrast, in construing "confusing similarity," has looked to the multi-factor analysis in......
-
Whiskey's Good Proofing Water, But It Doesn't Tell You Who The Real Peaky Blinders Are
...a "likelihood of confusion," but had failed to do that. The court analyzed the situation under Mattel, Inc. v. Walking Mountain Products, 353 F.3d 792 (9th Cir. 2003), and it held that only three of the eight relevant factors favored finding a likelihood of confusion. As a result, the court......
-
Whiskey's Good Proofing Water, But It Doesn't Tell You Who The Real Peaky Blinders Are
...a "likelihood of confusion," but had failed to do that. The court analyzed the situation under Mattel, Inc. v. Walking Mountain Products, 353 F.3d 792 (9th Cir. 2003), and it held that only three of the eight relevant factors favored finding a likelihood of confusion. As a result, the court......
-
Barbie Goes to Court
...has been in court quite often. Is there a litigious Barbie, yet? … In Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003), the toymaker sued Tom Forsythe, a photographer, after he photographed nude Barbie using kitchen appliances, a “Food Chain Barbie” depicting a “Ma......
-
Table Of Cases
...187. Matsushita Elec. Indus. Co. v. Cinram Int’l, Inc., 299 F. Supp. 2d 370 (D. Del. 2004), 135. Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), 78. McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917 (Fed. Cir. 1995), 55, 56. McElmurry v. Ark. Power & Light Co., 995 F.2d ......
-
From book covers to domain names: searching for the true meaning of the Cliffs Notes temporal test for parody.
...using the style of DR. SUESS, THE CAT IN THE HAT to poke fun at the O.J. Simpson trial), with Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003) (holding of fair use for photographs of Barbie doll being attacked by household (40.) Parody is not a true legal defense. See i......
-
Basics of Intellectual Property Laws for the Antitrust Practitioner
...and No. 2793439 (motion of how doors on an automobile open). 402. See 15 U.S.C. § 1114. 403. See Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 806 (9th Cir. 2003); Thane Int’l v. Trek Bicycle Corp., 305 F.3d 894, 900–01 (9th Cir. 2002). 404. See 15 U.S.C. § 1127 (definition of a tr......
-
The First Amendment and the Right(s) of Publicity.
...of constitutional avoidance instead of engaging in direct First Amendment analysis. See, e.g., Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 808 n.14 (9th Cir. (299.) Cf. 15 U.S.C. [section] 1125(c)(3) (2018) (providing expressly for such defenses in the context of dilution). (300.)......