It's Still a Barbie World

Thoughts on trademarks, digital disruption, litigation & world building.

Photo by ZENG YILI on Unsplash

My prior article, “Trademark Battles in a Barbie-Cyber World: Trademark Protection of Website Domain Names and the Anticybersquatting Consumer Protection Act.”, examined Mattel, Inc.'s litigiousness protection of its Barbie trademark circa 2009 & what this approach to trademark law and brand protection may mean for parody, first amendment law & domain name law under the US Anticybersquatting Consumer Protection Act (ACPA).

As many will know, prior to the 1999 enactment of the ACPA, trademark infringement & dilution law in the US did not provide structured redress to trademark owners for the unauthorized registration of domain names that contained their trademarks. The law’s reach was limited by how cybersquatters used the domain names; mere registration of a domain name was not a trademark use, which placed typical cybersquatting outside the scope of the law. Many plaintiffs argued that registration of a domain name that contained a trademarked term was a new form of trademark dilution.

The ACPA modernized US trademark law to address the needs of brand owners in the digital world. A successful domain name claim is now possible where three requirements are met: 1) the plaintiff’s trademark is distinctive or famous; 2) the domain name is identical or confusingly similar to that of the trademark owner's; and 3) the defendant acted with bad faith intentions when registering.

The ACPA also provides two additional "weapons" to trademark owners to protect their trademarks that were previously unavailable: jurisdiction and statutory damages. First, the ACPA provides for in rem jurisdiction against the domain name itself, which alleviates trademark owners' difficulties in locating the domain name's registrant, since many cybersquatters register domain names under aliases and use false information to avoid being identified. Second, in regards to remedies, the ACPA allows a US court to award injunctive relief barring the defendant's further use of the domain name, cancellation or transference of the domain name to the plaintiff, actual damages and profits, attorneys' fees, and statutory damages in an amount between $1,000 and $100,000 per domain name. Additionally, the ACPA ensures that the actual bad faith registrants are held accountable for their registration through limited liability for domain name registrars.

Enactment of the ACPA addressed much of the bad faith cybersquatting trademark owners encountered in the digital world.

At a global level, effective systems for domain name-related dispute resolution & remedies are also available through World Intellectual Property Organization – WIPO’s Domain Name Dispute Resolution Service and ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP). Each of these systems is comprehensive and effective in its own right, ensuring that trademarks are respected in the global domain name registry.

Fast forward to 2023, and the world is more complex.

The digital universe is no longer only about domain names. World building in the Metaverse is a hot venue for brand building. Brand owners must further consider NFTs and how they may dilute or infringe on trademarks. These days, it’s well-accepted that an effective brand protection program is not only about policing counterfeits & parodies in the real world, but also about various digital channels. 

But for a company like Mattel, brand protection is not just about intercepting counterfeits that may threaten revenue and harm ROI. Perhaps more importantly, the brand is dependent on maintaining Barbie's image a children's toy to maintain its commercial and cultural value in the long term. As I explained in 2009:

Mattel's Barbie doll is more than just a trademarked toy produced for child consumption-Barbie has entered public discourse and become a cultural phenomenon. Her public image has been crafted, refined, and protected by Mattel's marketing, development, and legal departments for nearly fifty years, with significant economic implications - Barbie is the “best selling toy doll in the world.” In 2003, the Ninth Circuit cited that Barbie has been referred to as "possibly the most famous toy in history” and characterized the doll as "phenomenally successful from the moment of its introduction;” she is more than just a doll, Barbie has become a public figure and cultural icon. Mattel has "bec[o]me the world's largest toy maker, with Barbie as its flagship product line.” Therefore, it is only appropriate for Mattel to protect Barbie's image from any attempts to besmirch her reputation, which could detract from Barbie's value as a children's product. In addition to Barbie's epic status and economic value in the children's toy market, she has taken on additional meanings and status at a societal level. As Judge Kozinski so aptly wrote, "[w]ith fame often comes unwanted attention.”’ She is “an icon and a fetish-to some angelic to others depraved” and she has inspired artists, writers, and academics from a variety of fields in a way that suggests she is more than just a child's toy." "Barbie has become an unmistakable reference point in our world…" (cite)

In these circumstances, active policing and maintenance of the Barbie brand is necessary both in the real world, with respect to knock-offs, counterfeits, parodies & anything else that might besmirch Barbie’s reputation; and also in the digital world, where the same ills may befall her. Over the decades, Mattel has demonstrated that aggressive litigation is part of that strategy.

These endeavors only become more nuanced with Margot Robbie entering Barbie’s world. A recent New Yorker article, discusses Mattel’s efforts to “raid” its own toybox, across its various brands, as part of a world building exercise. Mattel has the benefit of drawing inspiration from deep in its archives, everything from 1990’s era toy commercials to years of merchandise, to develop movies, theme parks & other properties. It’s an incredible approach to maximizing ROI, staying relevant in a fast-paced consumer market & garnering loyalty from a multi-generational market, where previously there was a finite moment, perhaps only a few years of childhood, where these brands would be relevant. Indeed, it’s been done effectively before; see Pixar’s Toy Story franchise & Lego’s movie franchise.

So, as the commercial value of Mattel’s toybox continues to skyrocket, I am predicting we’ll only see more trademark and brand protection-related litigation. It’s still a Barbie world, we’re just living in it.

Post Script

• This newsletter updates & draws on my award-winning article from 2009. It’s still highly relevant with the added context of digital world building & continues to get cited in global scholarship. I have many thoughts - as do many others - about the cultural role of the Barbie icon. Some of mine are in the article, and the footnotes will direct you to loads of great books that unpack the themes.

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