IP Masterclass Part 2: How Mattel enforces IP rights in Barbie and beyond

In the first part of our Barbie IP Masterclass, we discussed ways in which Mattel protect and exploit their IP rights in the Barbie doll.

In this article, we will explore how Mattel enforces them and how, on occasion, it has found itself on the other side of an infringement action.
Mattel is no stranger to an IP dispute. In fact, Barbie’s life began at the heart of one.

Inspiration is the highest form of flattery

In 1956, Mattel’s co-founder, Ruth Handler, visited Europe with her children Barbara and Kenneth (Barbie and Ken) and came across a German toy doll called Bild Lilli. The Lilli doll was first sold in Germany in 1955, and its popularity grew through the ability to dress the doll in various outfits.

Handler returned to the US inspired by Lilli and designed the Barbie doll, which made its debut at the American International Toy Fair in New York City in 1959. The Lilli Doll owners sued Mattel in 1961, arguing that Barbie infringed on its hip-joint patent and caused confusion by misleading the public into thinking that Mattel had created the design.

Following years of litigation, the case was later settled with Mattel purchasing the copyright and patent rights in the Lilli doll for $21,600 (approximately $212,000 today) as part of the settlement.

The Battle of the Dolls

Barbie dolls were first produced in 1959, whereas production of the Bratz dolls started in 2001. In April 2005, MGA (the manufacturers of Bratz dolls) filed a claim against Mattel claiming that a new line of “My Scene” Barbie with a big head and slim body copied the design of Bratz dolls.

Mattel countered this by arguing that the designer of the Bratz dolls was employed by them when he created the design in question, so they owned the intellectual property in the designs.

In July 2008, the jury ruled in favour of Mattel, and ordered that MGA pay $100 million in damages and remove Bratz dolls from sale (an injunction that lasted for around one year).

However, the two toy companies continued to fight it out in what is known as “The Battle of the Dolls”. In 2013, the underdog MGA came out as the winner in the copyright and trade secrets dispute and Mattel was ordered to pay MGA’s whopping legal fees of $138 million.

Life in plastic, not fantastic?

In 1997, Mattel sued MCA Records over the Danish band Aqua’s pop song “Barbie Girl,” alleging trademark infringement, unfair competition and trademark dilution.

Mattel claimed the song lyrics “associate sexual and other unsavory themes with Mattel’s Barbie products.” Mattel’s attorneys claimed children would be confused, believing the song was linked to the actual Barbie doll.

A judge in Los Angeles ruled against Mattel, finding that the song, which includes lyrics such as “I’m a blonde bimbo girl in a fantasy world,” was a parody and therefore protected by the First Amendment.

UK copyright law has a similar provision which allows use of copyright-protected works for the purposes of caricature, parody or pastiche without permission from the rightsholders.

Barbie v BRBY, how does it sound?

More recently on 26 June this year, Mattel filed an application to the US Trademark Office opposing British fashion house Burberry’s proposed “BRBY” trademark application, which was filed in July 2022, for use on apparel and leather goods.

Mattel claims that the vowel-less mark is visually and phonetically similar to Barbie, potentially causing confusion among consumers.

They argue that Burberry’s choice of the BRBY mark aims to associate with Barbie, diluting its distinctive quality. Distinctiveness is what defines a trade mark and what identifies and promotes a business as the sole producer of a product or service. They ensure brand integrity.

The outcome of this dispute is likely to have significant implications for Mattel, especially considering their recent investment into the marketing of the Barbie franchise, discussed in the first part of our Masterclass, ahead of the release of the Barbie film.

Why protection and enforcement of IP rights matters?

In our first Masterclass article, we discussed the importance of registering and protecting IP rights from the point of view of their commercialisation and exploitation. A registered IP right, or at least, one that has been adequately recorded (as should be the case with copyright protected works which in the UK are not subject to registration) becomes far more valuable, more attractive to investors, and more attractive to third parties who may wish to become its licensees or even assignees.

From the point of view of enforcement, registering IP rights can be a useful deterrent making third parties aware of the fact the owner takes IP seriously and discouraging them from committing acts of infringement. Moreover, registered IP rights tend to be significantly easier to protect and enforce against an infringing party than unregistered ones. This is because enforcing unregistered rights often involves significant effort, time and cost in terms of gathering evidence proving the existence of the right at a certain time, its ownership and scope, as well as other elements required by law (e.g.: goodwill and reputation in passing off claims).

Registered and clearly defined IP rights are also necessary for the purposes of investments, licences and other commercialisation agreements. The more uncertain or vague the subject matter of the agreement is, the more likely it is to lead to costly and complex disputes in the future. Therefore, clarity is desirable.

Without a doubt, the peace of mind and certainty provided by registering eligible IP rights is worth far more than legal and official fees involved in the process.

Early enforcement is also vital – it often allows to achieve an early resolution of a dispute which in turn means it does not need to proceed to costly and time-consuming later stages of litigation. Vast majority of IP disputes are resolved at a pre-action stage (i.e.: before the claim is issued) or through Alternative Dispute Resolution (ADR) before or soon after court and/or Intellectual Property Office proceedings are commenced.

Enforcement of trade mark rights matters because it preserves the value and integrity of the brand. For large companies like Mattel this is a crucial part of their business portfolio. Commonly, creative businesses own a number of key brands and associated IP rights that bring them significant income. It is therefore very important for them to protect these rights from unauthorised copying, dilution, damage to reputation and third parties taking unfair advantage of the time and money spent by their teams on product and brand development.

Patents, design and copyright can be as valuable as trade marks (if not more), particularly for companies such as Mattel whose financial success depends on the design and look of their products and who constantly innovate to stay ahead of the competitors.

The same is also true for small and medium-sized businesses. Any business whose core or significant value lies in its IP assets should ensure they are protected and enforced as and when needed, otherwise its value and opportunities for further growth will inevitably decrease.

Equally, it is very important to enforce terms of licences and other commercial agreements focused on commercialisation of IP rights to ensure they are used in accordance with what the parties have agreed. Breaching terms of these agreements gives rise to a breach of contract claim, and often, a separate claim for infringement of IP rights, as discussed above.

Can we help?
If you would like to find out how your business can protect, enforce, and exploit its intellectual property rights, please do not hesitate to get in touch with one of our experienced intellectual property lawyers.