## Facts

- Tom Forsythe, operating as Walking Mountain Productions, created a photographic series titled “Food Chain Barbie.”
- The photographs depicted Barbie dolls—often nude—posed with vintage kitchen appliances and household items, frequently portraying Barbie in danger or distress.
- Forsythe described the works as commentary criticizing the objectification of women and Barbie’s cultural role in consumer culture.
- Forsythe used actual Barbie dolls in the images and used the word “Barbie” in certain titles and promotional materials (e.g., postcards, business cards, a website).
- Forsythe sold a small number of prints and posters and exhibited the photographs as art.
- Mattel sued alleging copyright infringement, trademark and trade dress infringement, federal dilution, and related state-law claims.
- In an ancillary discovery dispute, Mattel served a Rule 30(b)(6) subpoena on the San Francisco Museum of Modern Art (a non-party); the subpoena was quashed and the museum received attorneys’ fees.
- The district court granted summary judgment for Forsythe on the merits and denied Forsythe’s request for attorneys’ fees; both sides appealed aspects of the rulings.

## Issues

1. Whether Forsythe’s use of the Barbie doll in the “Food Chain Barbie” photographs was fair use under 17 U.S.C. § 107.
2. Whether Forsythe’s use of “Barbie” and related imagery created a likelihood of consumer confusion supporting Lanham Act trademark or trade dress infringement.
3. Whether Forsythe’s use of Mattel’s marks was actionable federal dilution or exempt as “noncommercial” use.
4. Whether the district court abused its discretion by quashing the non-party museum subpoena and awarding the museum attorneys’ fees.
5. Whether Forsythe was entitled to attorneys’ fees and costs under the Copyright Act and the Lanham Act.

## Decision

- The Ninth Circuit affirmed summary judgment for Forsythe on Mattel’s copyright claim, holding the photographs were fair use parody.
- The court affirmed summary judgment for Forsythe on trademark and trade dress claims, finding no likelihood of confusion.
- The court affirmed summary judgment for Forsythe on the federal dilution claim, holding the challenged use was noncommercial within the dilution statute’s exemption.
- The court affirmed the order quashing the SFMOMA subpoena and the award of attorneys’ fees to the museum.
- The court vacated and remanded the denial of Forsythe’s request for attorneys’ fees under the Copyright Act and the Lanham Act for reconsideration.

## Legal Principles

- Parody and criticism can be highly transformative fair uses; limited sales of expressive works do not necessarily defeat fair use when the new work adds new expression and message.
- In parody, copying the recognizable object in full may be permissible when needed to “conjure up” the original and the use does not act as a market substitute.
- The fourth fair-use factor focuses on substitution in the relevant markets; harm from criticism or reputational dislike is not cognizable market harm under copyright law.
- Expressive uses of trademarks and trade dress in art do not violate the Lanham Act absent a meaningful likelihood of consumer confusion as to source or sponsorship.
- Use of a mark in titles or promotion may be protected where it functions to identify the subject of the commentary rather than to brand the defendant’s goods.
- Federal dilution liability does not reach noncommercial, expressive uses even if the work is sold in limited quantities.
- Courts may quash burdensome non-party discovery and award reasonable fees to protect non-parties; such decisions are reviewed for abuse of discretion.
- A prevailing defendant may be eligible for attorneys’ fees under the Copyright Act and the Lanham Act; fee denials may require reconsideration where claims are shown to lack merit.

## Conclusion

The Ninth Circuit held that Forsythe’s “Food Chain Barbie” photographs were protected fair use parody and did not create trademark or trade dress confusion or actionable dilution, affirmed protection of a non-party museum from burdensome discovery, and required the district court to reconsider Forsythe’s request for attorneys’ fees.


Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003)