Introduction:
With the ‘Barbie’ movie releasing on the 21st of July, the world has been coloured its signature pink. It has had one of the most successful promotional campaigns in recent history, that has shaken the world market. With all the conversations going on about the cast, director and story, attention automatically turns to the iconic Barbie doll. The Barbie doll, hit the markets in New York, in 1959, holding the hands of its creator and Mattel’s co-founder Ruth Handler. [1]The doll was born as a product of the advent of second-wave feminism and women’s desire to break free of the well-established pattern of motherhood and marriage. Mattel, previously a furniture company, founded in 1945, struck gold with the Barbie, and despite several complaints from the parents, Barbie soon cemented her place as an iconic doll in American history. [2] Besides its immense contribution to the world pop culture, Barbie has raked in billions of dollars for its parent company, Mattel. The company reported 1.49 billion US dollars in global gross billings, last year.[3] Since the creation of Barbie, Mattel has created many successful toy brands like Fisher-price, Hot Wheels, American dolls and Thomas and Friends[4]. It is understandable that when a company creates a brand loved and purchased by billions worldwide, it goes to great lengths to protect it. That is where trademarks come in. Trademarks are words, catchphrases, logos, symbols, colours or a combination of all of them, that a company uses to identify their brand[5]. It provides legal protection to the company against counterfeiting and also helps establish a loyal fanbase, in a competitive market. [6] Trademarking a logo, a word or a phrase does not mean owning it in general, but you can control how it is used in particular contexts[7]. For example, a faucet company named ‘Duke’ can not sue an automobile company with the same name, because they are providing different classes of goods and services. It is generally not a good idea for a company to choose a very commonly used word or phrase, as it would be much harder to legally defend the trademark. A person using a trademark to demarcate his brand automatically becomes an owner of the said trademark. But mere ownership entails limited rights that apply only up to a certain geographical area. If a company wants nationwide, iron-clad protection of their brand it is important they register it with the appropriate authority. [8]We will be discussing Mattel’s steps and journey in protecting Barbie’s legacy and maintaining one of the most iconic brand images for nearly 64 years.
‘Barbie Pink’ and Colour trademarks
One of the key things to be noted about the ‘Barbie’ film’s marketing campaign is that it dripped in a distinct shade of hot pink, and this was not an arbitrary artistic choice but rather a clever strategy. Since its release in 1959, Barbie has famously been associated with a shade of hot pink. Although the company did not officially register for a “colour trademark,” it has obtained exclusive rights to the colour through its consistent use of it[9]. Mattel has released thousands of Barbies, kitchen-wares, and toy accessories in the shade of ‘Barbie pink’ and through their exclusive and extensive use of the colour, connected it with the brand.
Colour trademarks are legally operable when a brand uniquely associates itself with a single colour.[10] The association or connection is made by the exclusive use of the colour by the brand in a distinctive manner over some time. For example, the luxury fashion brand Christian Louboutin has trademarked a dark scarlet hue, which is touted as the ‘Louboutin Red’. [11]Creating a unique brand narrative is one of the most important elements of success for companies which is clear by the buzz and billions Mattel is rolling in with its production and promotion of ‘Barbie’. And this is possible only because Mattel has carefully curated an image for its product, through a clever use of font, colour, logo and protection through trademarks. Even though Mattel has not formally registered ‘Barbie Pink’, it has frequently gone to court about trademark suits.
Mattel’s extensive history of brand defence
Mattel has been famous for its trend of aggressive defence of trademarks under the leadership of lawyer duo Quinn Emanuel Urquhart and Sullivan. [12] In a famous case of 1997, Mattel sued the Danish brand Aqua for their song ‘Barbie Girl’ under the complaints of brand dilution and trademark infringement. The case was eventually dismissed because the song was found to be a parody of the brand which is protected by free speech.[13]In one of the most shocking legal cases in the world of plastic, Mattel sued MGA Entertainment and Carter Bryant in 2004 over a case of stolen intellectual property[14]. MGA Entertainment brought out the fashion-forward Bratz Dolls which was a direct competition for Barbie, so when Mattel discovered that Carter Bryant, a former employee of Mattel, had pitched the idea for the same to MGA Entertainment they took notice of it immediately.[15] Mattel made their employees sign an intellectual property contract which stated that any ‘invention’ made during their course of employment will be owned by Mattel. So, Mattel claimed that the Bratz doll was an intellectual property of Mattel, and an injunction be put on the sale of it by MGA Entertainment. [16] The case was settled by Carter Byrant out of the court but Mattel continued the suit against MGA Entertainment which ultimately resulted in a federal court agreeing to it and awarding Mattel with 100 million dollars in 2008. [17]
The U.S. Court of Appeals for the 9th Circuit had a different opinion though so they reversed and put the case to a new trial. [18] They examined the particular contract of intellectual property based on which Mattel has brought the suit and opined that it was ambiguous in nature.[19] They stated that it was unclear whether the ‘idea’ for Bratz could be counted as inventing also there was no proof that Bryant got the idea during the course of his employment. Based on these facts, Mattel lost the new trial. [20]In a more recent case in 2022, Mattel sued the snacks brand Rap Snacks Inc. for their new line of snacks because the chips packet features the word ‘Barbie’ in all too familiar cursive script as well as a celebrity wearing the ‘Barbie’ necklace.
Conclusion
To sum it up, it is evident that Barbie has a unique legacy that its parent company Mattel has gone to great lengths to protect. The reason for this diligent protection is not only because of its cultural value but also because the brand reputation generates great revenue. So, it is evident that trademarks are essential in creating a convincing and successful brand image. In India, the legal framework for trademarks is governed by the Trademarks Act 1999 and Trade Marks Rules 2017 and one can apply for the registration of a trademark through the online website of the Controller General of Patents, Designs and Trademarks.
Author(s) Name: Subhalaxmi Mukherjee (The West Bengal National University of Juridical Sciences, Kolkata)
References:
[1] Anya-Willow O’Brien, ‘Barbie : the real story behind the world’s most famous doll’ (Business post, 21 July 2023) <A potted history: the story behind the world’s most famous doll | Business Post> accessed 22nd July 2023
[2] ibid
[3] Aislinn Murphy ‘Mattel’s Barbie earns over a billion every year’ Fox Business (New York, 20 July 2023)
[4] ‘Mattel Trademarks’ (Gerben Intellectual Property) <Mattel Trademarks – Gerben Intellectual Property (gerbenlaw.com)> accessed 22nd July 2023
[5] ‘What is a trademark?’ (United States Patent and Trademark Office) <What is a trademark? | USPTO> accessed 22nd July 2023
[6] ibid
[7] ibid
[8] ibid
[9] ‘Colour Trademark: Does Mattel Own ‘Barbie Pink’?’ (Quality Oracle, 23 July 2023) <Colour Trademark: Does Mattel Own ‘Barbie Pink’? — Quality Oracle> accessed 25th July 2023
[10] ibid
[11] ibid
[12] Jenna Greene, ‘Don’t mess with Barbie’ (Reuters, 17th August 2022) <Don’t mess with Barbie | Reuters> accessed 25th July 2023
[13] ibid
[14] Scott Levine, ‘Fascination Lessons from the case of Mattel v. MGA/Barbie v. Bratz’ (Aegis Law, 10th September 2018) <Case Lessons #1 of Mattel vs MGA/Barbie vs Bratz | AEGIS Law> accessed 27th July 2023
[15] ibid
[16] ibid
[17] ibid
[18] ibid
[19] ibid
[20] ibid
[21] Mayashree Acharya, ‘Trademark – Meaning, Application, Procedure, Documents, Cancellation’ (Cleartax, 15th May 2023) <Trademark – Meaning, Application, Procedure, Documents, Cancellation (cleartax.in)> accessed 27th July 2023
