Mattel Inc. v. Walking Mountain Productions

I continue with another of trademark law’s greatest hits. Take away: “Accordingly, the public interest in free and artistic expression greatly outweighs its interest in potential consumer confusion about Mattel’s sponsorship of Forsythe’s works. ” p. 37.

What was all the fuss about?

The question from this case I have not seen tested is when does a TM become a “cultural icon.” I would submit that Elvis falls into that category, but is treated differently because of personal right of publicity. However, when the two cannot be separated, personal and business persona, when can the public ever win?

MATTEL INC., a Delaware Corporation, Plaintiff-Appellant


WALKING MOUNTAIN PRODUCTIONS, a California Business Entity; TOM FORSYTHE, an individual d/b/a Walking Mountain Productions, Defendants-Appellees.

No. 01-56695, No. 01-57193.


2003 U.S. App. LEXIS 26294

March 6, 2003, Argued and Submitted, Pasadena, California
December 29, 2003, Filed

[1] 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.Before: Harry Pregerson and Sidney R. Thomas, Circuit Judges, and Louis F. Oberdorfer, Senior District Judge. * Opinion by Judge Pregerson.

* The Honorable Louis F. Oberdorfer, Senior Judge, United States District Court for the District of Columbia, sitting by designation. [*2]

PREGERSON, Circuit 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. n1 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 [*3] 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.

n1 Forsythe possessed slides of 386 additional photographs that he never published, distributed, or sold because he considered them inadequate for the series.

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 [*4] 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. n2 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. n3

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Kellogg Company v. Toucan Golf, Inc.

Yes, this is an old case. But, in combines 2 of my favorite things – the Lanham Act and golf (and you thought I was all about copyrights). Plus, it has the benefit of having cartoon pictures in the opinion, which is idiocyncratic to trademark cases. Not only does this case state trademark law essentials clearly – “[T]rademark law is grounded on a likelihood of confusion standard. We find that no consumer would associate Kellogg with top-line golf equipment based on Kellogg’s extremely limited licensing of its characters on novelty items.” but also includes this gem which stems from the hangover from Victoria’s Secret’s actual evidence of dilution standard which was, thankfully, a short detour in American trademark law – “We find Kellogg’s proffered empirical evidence insufficient even to meet the lesser standard.” See Victoria’s Secret Catalogue, Inc. v. Moseley, 537 U.S. 418 (2003).

Kellogg Company, Plaintiff-Appellant, v. Toucan Golf, Inc., Defendant-Appellee.

No. 01-2394


2003 U.S. App. LEXIS 14660; 2003 FED App. 0241P (6th Cir.)

May 6, 2003, Argued
July 23, 2003, Decided
July 23, 2003, Filed

ARGUED: Daniel S. Mason, ZELLE, HOFMANN, VOELBEL, MASON & GETTE, San Francisco, California, for Appellant.

Gerard Mantese, MANTESE & ASSOCIATES, Troy, Michigan, for Appellee.

ON BRIEF: Daniel S. Mason, Christopher T. Micheletti, ZELLE, HOFMANN, VOELBEL, MASON & GETTE, San Francisco, California, for Appellant.

Gerard Mantese, MANTESE & ASSOCIATES, Troy, Michigan, John J. Conway, Detroit, Michigan, for Appellee.

Before: SUHRHEINRICH and COLE, Circuit Judges; CARR, District Judge. *.

* The Honorable James G. Carr, United States District Judge for the Northern District of Ohio, sitting by designation.


SUHRHEINRICH, Circuit Judge. Plaintiff-Appellant Kellogg Company appeals from the district court’s affirmation of the Trademark Trial and Appeal Board’s (TTAB) decision to permit the registration of the word mark “Toucan Gold” by Defendant-Appellee Toucan Golf, Inc. (TGI), a manufacturer of promotional golf equipment.

Kellogg claims that TGI’s word mark and its corresponding [*2] toucan logo create a likelihood of confusion with, and dilute the distinctiveness of, Kellogg’s five federally-registered and incontestable “Toucan Sam” logos and word mark under the Lanham Act as amended, 15 U.S.C. § § 1051, et seq.

We affirm the decision of the district court and deny Kellogg’s claims. TGI’s use of the word mark “Toucan Gold” does not create a likelihood of confusion among consumers, principally because TGI’s use of its mark is in an industry far removed from that of Kellogg. Also, TGI’s toucan logo, as a realistic toucan design, does not create a likelihood of confusion with Kellogg’s more cartoonish “Toucan Sam” designs. Furthermore, Kellogg has not presented any evidence that TGI’s use of its marks actually dilutes the fame or distinctiveness of any of Kellogg’s marks. [**3]

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