Yesterday, President Obama nominated Second Circuit Judge Sonia Sotomayor to replace retiring Justice David Souter.  To no one’s surprise, newspapers, blogs and TV news programs across the country immediately began scrutinizing Judge Sotomayor’s personal and professional background, including her judicial record.  This blog is no different of course, except that it focuses on intellectual property issues and therefore will examine Sotomayor’s experience exclusively from an IP standpoint.

In looking at Judge Satomayor’s background and experience in IP cases, there’s really not many cases to look back on.  While sitting on the bench on the U.S. Court of Appeals for the Second Circuit she did issue decisions in numerous trademark disputes.  But none of these cases seems particularly noteworthy.  Nor did there seem to be any overarching viewpoint that can be gleamed from a quick review of these cases.   

However, Sotomayor has issued decision in a few very significant IP cases.  In 2002, she issued a decision in one of the first rulings involving the Anti-Cybersquatting Consumer Protection Act.  Her decision helped establish the parameters of how and where claims under the ACPA could be brought by trademark owners.  The Act, which was enacted in 1999, makes it illegal for someone to register a domain name that is either a trademarked term or an individual’s name with the sole intent of selling the rights to that domain name for a profit.  One important provision in the law allows trademark owners to bring an in rem suit (which is a suit against the domain name itself, instead of against the registrant of the domain name).  The 2002 ruling in Mattel Inc. v.Barbie-Club.com (which was discussed in a prior blog issued by Sotomayor clarified that such in rem jurisdiction only applied in the judicial district where the domain name register, registry or other authority is located.More...

DOMAIN NAMES/CYBERSQUATTING/DILUTION

A series of cases found Mattel's trademark "BARBIE" famous, and that domain names containing derivatives barbiesplaypen.com, barbiesbeachwear.com and barbiesclothing.com diluted the mark.

Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q. 2d 1620. (S.D.N.Y. 2000)

Mattel Inc., v. Jacom, Inc., 48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998)

Mattel, Inc. v. Adventure Apparel, 2001 WL 1035140 (S.D.N.Y. 2001)

Mattel, Inc. v. Barbie-Club.com, 310F.3d 293 (2d Cir.2002) 

Mattel, Inc. v. Global China Networks, LLC, 2007 WL 3332662 (S.D.N.Y.,2007)

Odds & Ends:

Entm't v. KIDdesigns, Inc., 2005 U.S. Dist. LEXIS 44386

Mattel was sued as co-defendant alleging Mattel allowed a Barbie compilation CD to be released with knowledge that royalties were not being paid properly by another party.

Gunther-Wahl Productions, Inc. v. Mattel, Inc., 104 Cal.App.4th 27, 128 Cal.Rptr.2d 50 (Cal.App. 2 Dist., 2002.)

Plaintiff sued Mattel for breach of an implied-in-fact contract, alleging that toys were based on ideas he presented to Mattel. Plaintiff claimed that his Flutter Faeries ideas were “taken from him.” Gunther-Wahl claimed that ideas for various Mattel dolls, including Barbie and the Polly Pocket line, that followed his presentation to Mattel of Flutter Faeries in 1993 were similar to his concept for Flutter Faeries. The jury found for the Plaintiff. The court of appeals tossed the jury instructions, so the case was remanded.

This is not an exhaustive list of litigation involving the Barbie brand, but a fun look at selected cases. I have inserted links to either free case law or topical discussions on the cases when available. Special thanks to third year law student James “Mitch” Mitchell for his research assistance.

Trademark/Unfair Competition:
Walter v. Mattel, Inc., 210 F.3d 1108 (9th Cir. 2000)

Plaintiff Walter sued Mattel for misappropriation of her trade name, Pearl Beach, when Mattel released the Pearl Beach Barbie.  Walters was clearly the senior user of the name in her commercial illustration business.  Walter claims there was a likelihood of consumer confusion that consumers would believe her services and the Mattel products were associated.  The Court held Ms. Walters was unable to show a likelihood of reverse confusion between her business and Barbie because the products were not complementary, were not sold to the same class of purchasers, and were not similar in function.

Copyright Infringement:

The Miss America Organization v. Mattel, Inc., 945 F.2d 536 (2nd 1991).
There she goes, "Miss America."  In 1991 a shipment of 11 1/2 inch glamorous but--according to their maker--wholesome, high fashion dolls were detained in customs because of a striking resemblance to Barbie.  These dolls were ordered by the Miss America Organization, via Kenner Corporation. When Kenner began importing its "Miss America" line of dolls into the United States, Mattel asked U.S. Customs to detain them. Kenner and the Miss America Organization responded by suing Mattel and United States Customs in federal court.

This case is a really insightful look at the interplay of the administrative procedures of US Customs seizing items that Customs deems infringing and comparing that to the copyright infringement standards applied in federal court. More...

In anticipation of Barbie® turning 50 in March this year, I thought we could take a look at some of Barbie’s legal adventures over the years.  Because so much has been written on the Bratz dispute we will be focusing on other legal battles.   Jump in the Barbie Camper and let’s get the show on the road. First, a little history.  Barbie was actually born in 1958, at least according to her driver’s license, I mean trademark registration, which states Barbie was first used on dolls May 9, 1958.  I guess Barbie wanted to be a year younger so all the press states she’s turning 50 this year, I think she is really 51.  I stopped counting the number of copyright registrations that are in place for “molded dolls” with Barbie in the name; along with the “accessory” Barbie items that are registered. Mattel has covered the bases to protect the Barbie brand intellectual property.  Mattel seems to be the defendant as often as it is the plaintiff in varied legal actions from parody to copyright infringement to reverse likelihood of confusion actions. 

• PARODY

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.2002)
In 1997, Aqua, a Danish band, produced the song “Barbie Girl” on the album Aquarium. In the song, one band member impersonates Barbie, singing in a high-pitched, doll-like voice; another band member, calling himself Ken, entices Barbie to "go party."  Mattel sued MCA Records for trademark infringement and lost.  The court held this was a true parody protected by First Amendment and the song was a commentary "about Barbie and the values . . . she [supposedly] represents." Because the song was about Barbie, "the use of Barbie in the song title clearly is relevant to the underlying work.” More...