(Reuters) – As an overprotective parent, toymaker Mattel Inc has long had a reputation for zealously defending its intellectual property related to Barbie dolls.
So when Rap Snacks Inc launched its Nicki Minaj-branded “Barbie-Que Honey Truffle” potato chips, it was no surprise that Mattel cried foul — not when the bag of chips features “Barbie” in that familiar cursive script as well. than a photo of the rapper wearing a Barbie necklace.
As my colleague Blake Brittain reported, the company sued Rap Snacks in federal court in Los Angeles last week, alleging that its product violates Mattel’s trademark rights.
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Rap Snacks did not respond to a request for comment. Minaj, who is not named in the lawsuit, also did not respond to a request for comment via her management company, Salexco.
While grabbing headlines, this latest lawsuit looks different from some Mattel has filed in the past. The company, which in 2013 was slapped with a $138 million bill for its opponent’s legal fees in an epic copyright and trade secret dispute with Bratz doll makers, said she recalibrated her litigation strategy?
A Mattel spokeswoman declined to comment.
I asked Harvard Law School professor Rebecca Tushnet, who wrote a 2013 law review article analyzing Mattel’s Barbie-related litigation, her take on the latest lawsuit.
Without commenting on its merits, she said the litigation struck her as “separate from what Mattel used to do.”
Many of Mattel’s earlier high-profile cases (but not the Bratz fight) focused on the spoken word, Tushnet said, with the company objecting to Barbie references in artwork, songs, posts and stories. other mediums.
The crisps lawsuit, on the other hand, is about a tangible product and if consumers are likely to be confused as to who is making it – a simpler application of trademark law.
“I don’t think this is a throwback to the bad old days,” Tushnet said.
In the late 1990s and early 2000s, Mattel, often represented by attorneys Quinn Emanuel Urquhart & Sullivan, pushed the boundaries of aggressive brand defense.
(Venable is representing Mattel in the chips case, but Quinn Emanuel said in a statement that the company remains “a good customer of the business.” Venable associate Lee Brenner did not respond to a request comment.)
In 1997, for example, Mattel sued MCA Records over Danish band Aqua’s pop song “Barbie Girl,” alleging trademark infringement, unfair competition, and trademark dilution.
A federal judge in Los Angeles ruled against Mattel, ruling that the song, which includes lyrics such as “I’m a blonde bimbo in a fantasy world,” was a parody and therefore protected by the First Amendment. The dismissal was upheld on appeal.
Two years later, Mattel sued Utah artist Thomas Forsythe over a series of 78 photos he called “Food Chain Barbie.” The images included naked Barbies in blenders, Barbies wrapped in tortillas and covered in enchilada sauce, and skewered Barbie heads in a fondue pot.
Forsythe in court papers said his intent behind the work, which earned him a total of $3,659, was to “criticize the objectification of women.”
Once again, Mattel lost in summary judgment and on appeal when the courts dismissed the toymaker’s claims of copyright, trademark and trade dress infringement, finding that the artist had done fair use of the material and that consumers were unlikely to be confused about any Mattel sponsorship.
Mattel struck again when it sued a woman who transformed Barbies into “Dungeon Dolls” and outfitted them in bondage outfits. A federal judge in New York in 2002 found that Susanne Pitt’s work was “transformative” and that the X-rated dolls “do not appear to pose a risk of usurping demand for Barbie dolls in the children’s toy market.”
Mattel’s most punishing defeat came in 2013, after a nine-year battle over copyrights and trade secrets with Bratz doll maker MGA Entertainment. Mattel, which launched the failed litigation, was ultimately ordered to pay MGA’s legal costs – a staggering $138 million for work carried out by Orrick, Herrington & Sutcliffe.
Over the next decade, Mattel continued to sue dozens of counterfeiters for selling unauthorized Barbie products. But the company, until the Barbie-Que chip case, hasn’t filed a splashy lawsuit in the United States.
Trademark attorney Ronald Coleman, a partner at Dhillon Law Group in New York and author of the “Likelihood of Confusion” blog, told me the new case “looks like a slam dunk” for Mattel.
“Matel’s assertion that many consumers will believe there is a merchandising deal between Barbie dolls and the snack maker is strong,” he said via email.
Where it could get tricky is connecting with Nicki Minaj.
Minaj fans are known as “The Barbz” and in 2011 Mattel created a one-of-a-kind Barbie doll of the rapper for charity. Additionally, Minaj on her 2018 album “Queen” featured a song called “Barbie Dreams.”
“For consumers who are only familiar with Mattel’s use of ‘Barbie’,” said William & Mary Law School professor Laura Heymann, the Barbie-Que packaging “might trick them into thinking the chips are a Mattel product”.
But fans of Minaj who know “Barbie” is one of her alter egos might understand that “Barbie” in this context primarily refers to her, added Heymann, whose work focuses on trademark and copyright law. copyright.
“Mattel has always been aggressive in enforcing its intellectual property rights to Barbie, both on the copyright and trademark sides, but not always successfully,” she said. “This case is interesting, however, because its success may depend on how the court views the relevant consumer market.”
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