Published 08/20/2021 by CIONCA IP TEAM (SE)
In part one of It's a Bratz Girl, in a Barbie World, we discussed Mattel v. MGA Entertainment, a fascinating case involving the businesses that own rights to the American culture icon Barbie and the body positive multicultural Bratz.
We left off at the first district court case between these two titans, with Mattel winning the entire Bratz doll trademark portfolio from MGA. However, when the case went to the court of appeals, Mattel was in for a real surprise. There are two reasons why.
First, the jury did not believe that MGA infringed on Mattel's rights by producing Bratz dolls. Second, the jury found that Mattel was the party giving away MGA's trade secrets.
But how exactly did we go from one extreme, where Mattel won trademarks from MGA to Mattel now being found to have infringed on MGA's trade secrets? Well, in the Ninth Circuit Court of Appeals, MGA and Mattel argued several main points, including these three things:
After a debate from both Mattel and MGA, the Ninth Circuit felt that Mattel's work agreement with Bryant did not apply to ideas, and therefore Mattel did not claim the "idea" of Bratz dolls. Mattel did not dispute this claim.
When the Ninth Circuit used an intrinsic and extrinsic test to compare sketches with the Bratz dolls, they concluded that several things were unprotected by trademark law, such as a doll's high cheekbones, slim arms, and long legs.
However, they agreed that non-functional doll clothing, such as a specific doll accessory, is protectable. Similarly, the placement of elements, such as the shape and size, to express a unique style can infringe on copyright. The problem with the district court case was they the jury failed to recognize all the elements of Bryant's sketches which were unprotectable.
Therefore, the court also felt that only the first generation of Bratz dolls, like Bryant's sketches and early sculpts, was infringing copyright. Except for two, all other beauties from the second generation onward did not use any elements from Mattel's copyright.
The final issue was Mattel's claim in 2006, alleging that MGA stole its trade secrets, and a second claim later in 2010, where MGA also filed a suit that Mattel gave away its trade secrets. The court heard both arguments and decided that neither party had any claim because doll concepts and doll names cannot be trade secrets.
Overall, Mattel, Inc. v. MGA Entertainment is an interesting court case between trademark owners from two well-known brands. This dynamic case shows what occurs when jurors on district courts make mistakes that significantly impact a business. It also explains how to identify things that cannot be protected by trademark while reminding us to review our employee contract continually.
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
CIONCA IP TEAM (SE)8/20/2021 4:42:46 PM
It's a Bratz Girl, in a Barbie World (Pt. 2)
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.
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