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 Chilling Effects Clearinghouse > Copyright > Notices > Distorting Barbie (NoticeID 285, Printer-friendly version

Distorting Barbie

October 10, 1997


Sender Information:
Mattel, Inc.
Sent by: [Private]

Recipient Information:
Hostmaster [regarding work by Mark Napier]
Interport Communications
New York, NY, 10016, USA

Sent via:
Re: BARBIE Copyright Infringement

Dear Hostmaster:

I am an attorney for Mattel, Inc.

As you may know, Mattel owns the character BARBIE, as well as numerous copyright registrations for the depiction of that character. BARBIE has been consistently marketed since at least 1959. In connection with those copyrights, Mattel and its licensees have sold billions of dollars of merchandise. Mattel's copyrights wlith respet to the BARBIE character are therefore extraordinarily valuable.

I am writing because Mattel has recently learned that you are sponsoring the following page, on the Internet:

There can be no dispute that this page unlawfully infringes Mattel's copyrights.

In addition to pursuing whatever additional rights it may have under law, Mattel demands that you (i) immediately take whatever steps are necessary to remove this page from the Internet and prevent the further publication of its contents, and (ii) confirm to me in writing that you have done so within 5 business days.

We await your response.


FAQ: Questions and Answers

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Question: What kinds of things are copyrighted?

Answer: In order for a work to be protected by copyright, it must be an original creation set in a fixed medium.

An artist or author does not have a copyright in material borrowed from someone else. Also, stock characters (the sidekick) or plot lines (boy meets girl) are not copyrightable.

The requirement that works be in a fixed medium means certain forms of expression, most notably choreography and oral performances such as speeches, are not copyrighted, (unless they are being recorded contemporaneously). For instance, if I perform a Klingon death wail in a local park, my wail of death is not copyrighted, and someone else may come along and do the same thing the next day. However, if I film the performance, then the Klingon death wail does become copyrighted (since it is now "fixed" according to copyright law). Contrary to popular belief, I do not have to register my copyrighted work for it to receive copyright protection. In the United States, I only need to register if I'm going to sue.

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Question: What rights are protected by copyright law?

Answer: The purpose of copyright law is to encourage creative work by granting a temporary monopoly in an author's original creations. This monopoly takes the form of six rights in areas where the author retains exclusive control. These rights are:

(1) the right of reproduction (i.e., copying),
(2) the right to create derivative works,
(3) the right to distribution,
(4) the right to performance,
(5) the right to display, and
(6) the digital transmission performance right.

The law of copyright protects the first two rights in both private and public contexts, whereas an author can only restrict the last four rights in the public sphere. Claims of infringement must show that the defendant exercised one of these rights. For example, if I create unauthorized videotape copies of Star Trek II: The Wrath of Khan and distribute them to strangers on the street, then I have infringed both the copyright holder's rights of reproduction and distribution. If I merely re-enact The Wrath of Khan for my family in my home, then I have not infringed on the copyright. Names, ideas and facts are not protected by copyright.

Trademark law, in contrast, is designed to protect consumers from confusion as to the source of goods (as well as to protect the trademark owner's market). To this end, the law gives the owner of a registered trademark the right to use the mark in commerce without confusion. If someone introduces a trademark into the market that is likely to cause confusion, then the newer mark infringes on the older one. The laws of trademark infringement and dilution protect against this likelihood of confusion. Trademark protects names, images and short phrases.

Infringement protects against confusion about the origin of goods. The plaintiff in an infringement suit must show that defendant's use of the mark is likely to cause such a confusion. For instance, if I were an unscrupulous manufacturer, I might attempt to capitalize on the fame of Star Trek by creating a line of 'Spock Activewear.' If consumers could reasonably believe that my activewear was produced or endorsed by the owners of the Spock trademark, then I would be liable for infringement.

The law of trademark dilution protects against confusion concerning the character of a registered trademark. Suppose I created a semi-automatic assault rifle and marketed it as 'The Lt. Uhura 5000.' Even if consumers could not reasonably believe that the Star Trek trademark holders produced this firearm, the trademark holders could claim that my use of their mark harmed the family-oriented character of their mark. I would be liable for dilution.

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Question: How can I find out whether a work has a registered copyright?

Answer: Works are copyrighted as soon as they are "fixed in a tangible medium of expression," but some legal rights and remedies are available only if the work's copyright is registered. To find a copyright registration, you may search copyright records at the Copyright Office website, but be aware that not finding a match does not mean the work is uncopyrighted.

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Question: How can I tell if a character I have used is copyright protected?

Answer: The prevailing rule seems to be that a character is copyrightable separate from the original work if the character is "distinctly delineated." Authors can have a separate copyright protection for the characters in their works only if they have been developed and constitute original expression. Generic characters (the sidekick, for example) are not protected. Some courts require this delineation to be quite extensive, to the point that the character "constitutes the story being told." In Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d. Cir. 1930), however, the court held that the character needs simply be more than just a "type" and this is achieved when they are drawn in considerable detail. If characters with visual images are involved (i.e., cartoons, movies, etc.), then courts are more likely to allow copyright protection because the visual image combined with conceptual qualities gives courts a more concrete sense of character delineation. (See Rocky IV example below).

But what if these elements were not just ordinary scenese a faire? What if these worlds were elaborately filled with details? Under the character analysis above, these worlds and events would probably also receive copyright protection. Again, the distinction is that normal plots like boy-meets-girl cannot be copyrighted (just like how stock characters like the "sidekick" are not copyrightable), but the more detailed the plot is, the more it becomes protectible expression.

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Question: What is an "innocent fan fiction?"


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Question: What is copyright infringement? Are there any defenses?

Answer: Infringement occurs whenever someone who is not the copyright holder (or a licensee of the copyright holder) exercises one of the exclusive rights listed above.

The most common defense to an infringement claim is "fair use," a doctrine that allows people to use copyrighted material without permission in certain situations, such as quotations in a book review. To evaluate fair use of copyrighted material, the courts consider four factors:

  1. the purpose and character of the use
  2. the nature of the copyrighted work
  3. the amount and substantiality of copying, and
  4. the market effect.

(17 U.S.C. 107)

The most significant factor in this analysis is the fourth, effect on the market. If a copier's use supplants demand for the original work, then it will be very difficult for him or her to claim fair use. On the other hand, if the use does not compete with the original, for example because it is a parody, criticism, or news report, it is more likely to be permitted as "fair use."

Trademarks are generally subject to fair use in two situations: First, advertisers and other speakers are allowed to use a competitor's trademark when referring to that competitor's product ("nominative use"). Second, the law protects "fair comment," for instance, in parody.

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