Fair use or infringement? A hobby magazine for Barbie enthusiasts ran afoul of Mattell. Now the toy maker wants financial damages for trademark infringement

Folio: The Magazine for Magazine Management, Nov 1, 1997 by Phillip M. Perry

A hobby magazine for Barbie enthusiasts ran afoul of Mattel. Now the toy maker wants financial damages for trademark infringement.

How far can a magazine go when reproducing trademarked images on a cover or inside pages? At what point does a publisher cross the line between fair use and infringement? These questions have taken center stage in a court battle between a hobby magazine and a toy manufacturer.

Here's the background: Five years ago, Dan and Barbara Miller launched a quarterly magazine for Barbie Doll enthusiasts. Millers, subtitled an independent magazine for Barbie Doll collectors, has issued commentary and pricing guides ever since. Today the Millers claim a circulation of 45,000 nationwide and overseas.

Now, who would ever object to that?

Well, Mattel, it turns out. The toy maker, which sells over $1 billion worth of Barbie Dolls worldwide every year, has filed court papers charging the Millers with trademark and copyright infringement. The company wants not only an injunction to stop the publisher from using the trademarks, but financial damages. These include an accounting of what Mattel calls "the profits attributable to the defendants' unauthorized use of Mattel's trademarks, trade dress and copyrighted works of art."

How did this lawsuit come to pass? The answer will interest publishers of magazines specializing in a specific vendor's product--for example, enthusiast activities, cars or computer programs.

"In general terms, the lawsuit is about protecting our trademark," says Lisa McKendall, director of marketing communications at Mattel.

(Although Mattel does not publish a magazine that competes with Millers, the toy maker does license the use of the Barbie name to another consumer publication, Barbie Bazaar, of Kenosha Wisconsin, says McKendall. The court case, however, has nothing to do with that licensing arrangement, she notes.)

Millers denies the charges of infringement. "We maintain the Millers' activities are fair use under the trademark and copyright laws," says J. Christopher Lynch, the Millers' attorney. Lynch teaches intellectual property law at Gonzaga University Law School, and is a patent attorney with the Spokane law firm of Paine, Hamblen, Coffin, Brooke & Miller.

Filed in U.S. District Court in Los Angeles, the defense's response states, "Defendants' acts as alleged are lawfully permitted and protected by the First Amendment of the United States Constitution."

Says Lynch, "The Millers are basically the experts in the country on the history of the Barbie Doll, and they put out a newspaper and price guide in addition to the magazine. It's fascinating, the research Barbara Miller does. She can tell you the going prices for all of the dolls. She can look up what a 1968 Ken is worth."

Whatever the final outcome, the case spotlights the shadowy no-man's-land between statutory protection of trademark and copyright, and Constitutional protection of freedom of expression. When parties disagree over the boundaries of that domain, juries are asked to survey the terrain and lay out the property line.

I asked Stephen E. Gillen, a 20-year veteran of publishing and trademark law, to address the issues involved when producing such magazines. Now with the Cincinnati firm of Frost & Jacobs, Gillen specializes in publishing transactions and disputes. His comments address publishing issues in general, rather than the Miller case in particular.

"Magazines have a First Amendment right to report on products and in the process to call them by their names, even though they might be registered trademarks," says Gillen. "What the magazine cannot do is use the trademarks in such a way as to create the likelihood of consumer confusion about whether the magazine is published by, affiliated with, or endorsed by the trademark owner if that is not the case." Gillen further says, "Any time a magazine uses a product name in its title or subtitle, it runs a significant risk of creating such confusion, unless the rest of the title or the layout make it abundantly clear there is no connection."

Turns out, the parties in Mattel v. Miller come to different conclusions as to whether such confusion exists. Mattel's court filing states that "it is the intent, purpose and natural effect of defendants' conduct that consumers be confused into thinking that defendants' publications and other products emanate from Mattel."

The magazine disagrees: "Is there a likelihood of confusion?" poses Lynch. "Here, no." He points to the magazine's subtitle as evidence that no one would think of it as a company-sponsored publication.

Closely affiliated with the question of trademark infringement and confusion of origin is that of unfair competition. The court must decide whether the magazine is making a success on its own or unfairly hitching a ride on what has been created by someone else. The public may be purchasing the magazine, goes the reasoning, because of the attraction of the vendor's protected images, not because of the content created by the publisher.