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

"The bottom line is this," says Gillen. "Is the magazine publisher attempting to trade on the goodwill associated with the brand name, or are they trying to ride the coattails created by the vendor? If they are, then they have crossed the line. But if they make clear in disclaimers and by arrangement of the name of the magazine that they are not affiliated with the company, then they probably have a right."

Again, the parties disagree. Mattel states that the defendants have been "unjustly enriched by their misappropriation of the Barbie trade dress" and have used the company's trademarks "with the intent to trade on the enormous goodwill Mattel has earned in the Barbie products."

The Millers deny the charge. "For years it seems that Mattel was delighted that an independent business would promote their hobby at no charge," says Dan Miller. "Now it's as if there is an implication that I am freeloading off their hard work. It's a fine line you walk."

The Millers' response to the court states that "The Defendants' publications are original works of authorship fixed in a tangible medium of expression in which they have copyright and which, thus, do not infringe purported rights of Plaintiff."

If this case makes it to trial, the jury will need to deal with some additional issues raised in the lawsuit. Mattel objected to several specific activities of the Millers. First, to "using Mattel's copyrighted photographs and/or backgrounds in the publication."

Reflecting on this issue, Gillen notes that editorial use is probably supported by the First Amendment and fair use doctrine, depending on the context. A magazine crosses the line, however, if such use is to exploit the goodwill of that material rather than to communicate an editorial message.

Mattel also objected to "using Barbie trademarks and copyrighted works to market the publication," and "promoting and marketing a song called The Barbie Anthem."

Without passing judgment on the case, Lynch notes that using trademarked images to promote sales of a magazine "can create both trademark and copyright problems for the publisher." And as for creating add-on products, "the further one gets from pure publishing, the more tenuous becomes the First Amendment shelter."

Get permission first

One possible tactic for avoiding litigation is to obtain permission from a vendor prior to publishing a magazine that focuses on its product. Publishers of books about specific computer programs often take this route. These publishers sometimes receive advance copies of software for reviews, in exchange for including the "R in a circle" trademark notice whenever using the protected name in print.

In such cases, the vendors figure that the books promote use of the software and therefore increase sales. But asking is not getting. "The vendor might not give permission, fearing erosion of their trademark rights over the course of time," says Gillen.

But even for publishers who fail to get permission, there may be little risk of negative repercussions. "A magazine's practical exposure may be small because the magazine helps fuel demand for the product," says Gillen. "So long as the magazine does a credible job, and doesn't cross the line into unfair competition, the company will not bring a lawsuit because it doesn't serve its business interests."