Barbie called. She wants her IP back.
It’s everywhere. We’ve all seen it. The viral Barbie marketing trend filling our social media feeds and even some newscasts. She’s on cakes and cookies, and her box has become a popular prop for photography sessions.
Super cute photos? Absoutely!
Super cute cease and desist letter? Not really.
There has been ongoing discussion in the photography community recently about the legal issues surrounding these photographs, the legal rights, and what to do.
This article is from THE legal resource for photographers (HINT: No one else is a lawyer/photographer who is dedicated to bringing you this information). As an actively practicing intellectual property attorney and photographer, this information is my jam.
This information is from what we have gathered from the internet and community groups. At this time we have not had any discussion with Mattel, Inc. Take this as educational information to learn how to have fun with future photography sessions without infringing upon another's intellectual property rights.
Once you've read this article, it's time to enroll in Legally Cover Your (Social Media) Assets so you don't get a visit from Attorney Barbie!
What happened?
Recently, leading up to and coinciding with the release of the Barbie movie, social media has been flooded with photographers advertising Barbie-themed sessions. A city in Kentucky even had a box that was rotating to different small businesses within the city for the public to come by and take their own photos.
Other photographers were asking how these photographers were able to post on their social media and/or website photos of the boxes with or without clients in order to book more clients for these sessions. Do the photographers have a license to use the Barbie box and/or logo?
A Little Barbie Background
The Barbie fashion doll made her debut in 1959 for Mattel, Inc., one of the largest toy manufacturers in the world. Today, Barbie is the figural leader of an entire brand of fashion dolls and accessories for Mattel. Mattel holds various copyrights and trademarks for the Barbie brand which includes other fashion dolls in the line, the Barbie font, and even the color known as Barbie Pink, among others, and is known for vigorously protecting their intellectual property.
Mattel partnered with Universal Pictures in 2009 to develop a live-action movie based on the Barbie fashion doll line, but nothing resulted from that partnership. In 2018 Mattel created a new division, Mattel Films, to make films based on their toy lines. The films rights transferred to a few different companies over the years, with Warner Bros. Pictures acquiring those rights in 2018. The live-action motion picture, Barbie, was released in July 2023. Mattel entered into licensed brand partnerships with a number of other brands for Barbie-themed promotions leading up to and coinciding with the movie’s release.
A Peek at the Legalities
Before I can tell you who is right or wrong, you need to understand how trademark and copyright laws work. Being that we are THE go-to legal resource for photographers we have free videos and guides for help with this.
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You probably don't have time to watch those, so here is a super high-level crash course.
- Trademarks are source indicators, like logos and names. They provide legal rights to stop someone from using the same or similar mark CONNECTED TO a same or similar goods or service. The goal? Prevent consumer confusion and protect brands.
- Copyright is protection of the artwork itself, such as logo, photographs. For a work to qualify for copyright protection under current US copyright law, it must be an original work of authorship, fixed in a tangible medium of expression. “Original work of authorship” means it must be independently created by the author and possess some minimal degree of creativity.
As professional photographers, using terms like "Barbie" or using the Barbie box in marketing for business and/or the selling of photographs to clients will not be excepted under any standards, such as "fair use".
Basically, you cannot use any copyrighted or trademarked material in your marketing and/or for selling in photographs to clients.
Let's walk through each of these.
Copyright Issues
Under the Copyright Act, “copyright ownership ‘vests initially in the author or authors of the work,’ which is generally the creator of the copyrighted work.” 17 U.S.C. § 201(a). The owner of a copyright has a number of exclusive rights, including the right “to prepare derivative works” based on its original work of authorship, 17 U.S.C. § 106. Not every comic book, television, or motion picture character is entitled to copyright protection. We have held that copyright protection is available only “for characters that are especially distinctive.” Halicki Films v. Sanderson, 547 F.3d at 1224.
A character may be protectable if it has distinctive character traits and attributes, even if the character does not maintain the same physical appearance in every context. As the Eighth Circuit has recognized, “the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance.” Warner Bros. Entm’t, Inc. v. X One X Prods., 14 DC COMICS V. TOWLE 644 F.3d 584, 599 n.8 (8th Cir. 2011).
The Barbie box in question undoubtedly looks very similar to the distinctive qualities of the fashion doll’s packaging.
There is no mistaking that the box being used for photo sessions has been recreated in the essence of Barbie. Even with slight variations in the pink color, there is no mistake what this box represents. Combining the distinctive elements of the pink coloring, white trim, white text, etc. all lead to potential conclusive that this setup is not an "inspired" set but, rather, starts creeping into a direct infringement through the realistic portrayal of distinctive qualities that makes Barbie and her box unique.
Bottom line: Striking similarities in the distinctive qualities lends to an argument of copyright infringement.
As with any legal discussion, there are arguments for all sides. We welcome them - but first keep reading!
Trademark Issues
The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof” that a person or business either uses in commerce to distinguish their product or service from others or “has a bona fide intention to use in commerce” when they apply for registration. 15 U.S.C. § 1127. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) is considered to be evidence “of the registrant's exclusive right to use the registered mark.” 15 U.S.C. § 1115(a).
Mattel, Inc. is the lawful trademark owner of the Word Mark "Barbie" connected to many things, including photographs.
Photographers using terms that are same or similar to "Barbie" in connection with photographs is federal trademark infringement. Some alternatives could be the use of phrases like "fashion doll", where the terms are protected.
They have many other trademarks in different variations for Barbie and her entire toy line. If you want, you can check out all the entries in the federal United States Patent and Trademark database.
There are exceptions to use, such as fair use and parody. You can find where parody prevailed over Barbie here.
Bottom line: Don't use protected materials to advertise your photography sessions.
Is Mattel just being mean?
Nope, guess what y'all? Besides being serious about their legal rights, under trademark law Mattel is required to police their marks. If they don’t police their marks, they could be in danger of losing the marks' trademark protection. In contrast, copyright does not have this requirement. However, at TheLawTog® we believe all creators should take intellectual property seriously, stand up, and enforce the rights they are provided by law - whether required or not.
Photographers need to not be using costumed characters and any protected marks without the appropriate permission/licensing.
Why should photographers care?
Well, other than the obvious of being on the receiving end of a cease & desist. If you don't comply, you may owe the registered trademark holder disgorgement of your profits (this could include all the monies you made on not only the session you used in your marketing, as well as monies and profits from any of the photo sessions made during the use of those photographs in your marketing) AND attorneys fees. You’re not going to like what I’m telling you here, you could potentially have to pay not only your attorney but their attorney too.
It’s not just the large corporations with legal teams doing this (i.e. fulfilling their duties to police and/or enforce their intellectual property rights). I see it daily through TheLawTog® and my intellectual property law firm. It doesn't matter if you go viral or not. Actually book a session or not. If you use someone else’s copyright or trademarked work without a license, you WILL get caught.
Finally, and most importantly, we need to respect our fellow creators. As creators ourselves, we want to be able to control and have our work respected. We need to do the same.
What can photographers do?
- Don't use any trademarked or copyrighted materials in your marketing or sales to clients.
- Do "inspired by" sessions - take general elements that can create a scene without infringing on the exact protected marks. Learn more about “inspired by” sessions here.
- Get permissions, if available, from the mark or rights holder.
- YOU CAN STILL TAKE PERSONAL PHOTOGRAPHS OF YOUR KIDS IN COSTUME OR USING THE BOX. The point is that you can't use Mattel’s intellectual property for commercial gain (which includes posting photos on your business channels).
Does Mattel give permissions to photographers?
At the time of this writing, it is not known whether Mattel issues licenses to photographers for the use of their marks in client photo sessions. Photographers can request permission for commercial or non-commercial use of the Mattel copyrighted and trademarked materials via the appropriate form on their corporate website. Be sure to scroll toward the bottom of the page to find the trademark and copyright section. The website does state to allow at least 6-8 weeks for a response so be sure you have more than enough lead time to work through the request process before scheduling any potential photo sessions using the intellectual property.
Is there a way I can do Disney or comic book character sessions?
Create an inspired scene with color-blocking and minor elements that aren't cumulatively distinctive. Such as, a Princess-who-lost-her-slipper shoot could contain a pale blue dress, high heels and a blue headband but once you purchase or rent a costume that is very similar in the distinctive aesthetics you begin to infringe upon potential rights. Learn more about how to do “inspired by” sessions here.
What if the client wants and/or brings a costume to the session?
Costumes have an implied license of display. If the photographer is not soliciting the theme and/or costume, then there may be little (if any) liability to the photographer. You may be able to legally use those photographs for your portfolio and marketing, but the conservative advisement is to not use them.
Can I use the costume I bought and just not charge my clients?
Potentially . . . but I wouldn't risk it by posting the photographs. Just remember, even if you are IN the right, if you get sued you will have to put out your time and money to show that you are in the right.
Can I use the costume & have the sessions be a fundraiser for a non-profit?
Anything that is going to look like commercial usage is going to be at risk for potential legal issues. Non-profits are not excused from laws applied to commercial activities. The non-profit’s tax status is not a defense to infringement.
Can I "wink wink, nudge nudge" my clients to come in costume?
I wouldn't do this. Evidence would show your "wink wink, nudge nudge" to be a solicitation PLUS your intention to willfully hide it knowing it is infringement.
What if I buy a backdrop/costume?
Assuming the backdrop/costume doesn't have proper licensing from the rights holder, you may be liable. If you are looking for a backdrop to do an inspired theme be sure to watch for protected elements (i.e. book covers, characters, etc.) within the backdrop. A general backdrop that gives an idea of Barbie’s dream Malibu home or the Grinch’s "Whoville" may not be infringement, while an exact replica of the either would be infringement.
Can I make up a similar character?
Why not? So long as you're not infringing upon the distinctive characteristics, as outlined in the analysis above, you can create new characters that don't infringe.
What if I buy stuff for my personal photos?
See above. It's all about commercial usage. Don't solicit infringing uses. Don't advertise with infringing uses (this includes posting on your business social media or website. Use it personally, sure.
Have more questions?
If you want to ask questions or discuss further - please join our Facebook community here.
Related Articles & Cases:
- ‘Lawsuit Barbie’ Fails for Mattel
- Mattel Inc. v. Walking Mountain Productions
- Mattel, Inc. v. MCA Records, Inc.
- The Grinch That Stole Public Domain
- DC Comics & The Batmobile as a character
Protect yourself; enroll in Legally Cover Your (Social Media) Assets.
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