Written by: Bianca Lindau and Nicholas Holmes
It is the summer of pink and Barbie. The Barbie movie has had its third successful week in a row, recently reaching $1 billion in global ticket sales.[1] Barbie-fever is everywhere. Beyond the film, Mattel, Inc. (“Mattel”), the owner of the world’s most famous doll, has partnered with over 100 brands and retailers to bring consumers collaborations in sectors ranging from beauty and fashion to home décor, furniture, and food.[2] You can even spend a night in a real-life Barbie Dream House (located, of course, in Malibu, California).[3] The movie and the slew of collaborations involving licensing and joint ventures form part of Mattel’s strategy to make the doll and the brand culturally relevant.[4] Discussions about the value of intellectual property (“IP”) frequently focus on patents. However, Mattel’s new IP strategy is noteworthy because the toymaker is using its brands to further its business by creating new IP.
Becoming Barbie
Since her creation, the Barbie doll has been involved in IP legal battles. Barbie was the result of a patent infringement lawsuit. The original Barbie was modeled after a doll created by the German toy company, Greiner & Hauser GmbH (“G&H”), known as the Lilli doll, which it had brought to market in 1955.[5] While vacationing in Switzerland, Mattel co-founder Ruth Handler discovered the Lilli doll. In 1959, Mattel developed and sold a competing doll, Barbie. In 1960, a G&H managing director obtained a U.S. patent for the “doll hip joint” used in the Lilli doll. The patent was subsequently exclusively licensed to a then-large toy manufacturer known as Louis Marx & Co. (“Marx”). In 1961, Marx and G&H sued Mattel for infringement of the patent. After several years of back and forth, the case was settled out of court in 1963. In 1964, Mattel and G&H signed a settlement agreement. Under this agreement, among other things, Mattel purchased G&H’s copyright in the Lilli Doll and its German and U.S. patent rights for 85,000 Deutsche Marks (worth approximately $21,600 at that time). About forty years later, in 2001, the liquidator of the insolvent G&H sued Mattel in Germany for alleged fraud in connection with the 1964 agreements. The German court rejected the lawsuit, thwarting G&H’s efforts to rescind the assignment of copyright and patent rights that formed the basis of the Barbie product line.[6]
Barbie was involved in another well-known lawsuit in the late 90s/early 2000s. Mattel sued MCA Records, Inc. (“MCA”) over the Danish band Aqua’s song “Barbie Girl,” alleging trademark infringement, unfair competition, and trademark dilution, and MCA counterclaimed for defamation.[7] All claims were denied, and the dismissal was upheld on appeal. Notably, the song was held not to infringe Mattel’s trademark(s) as the use of the “Barbie” mark was an expressive use, commenting on Mattel’s doll and the values the band claimed Barbie represented and was therefore protected by the First Amendment. It should be noted that one of the songs of the Mattel-sanctioned Barbie movie soundtrack samples the 1997 smash hit in the song “Barbie World.”[8] Evidently, Mattel now embraces the parody, adopting a we-get-the-joke approach.
The Barbie brand
The first-ever Barbie logo was registered in 1959 and featured a bright pink, handwritten version of the word “Barbie.” This handwritten Barbie logo was changed five times before Mattel reverted back to the original version in 2009. When Mattel first filed for the logo mark “Barbie,” the application, and eventual registration, only covered one product – dolls. Since 1959, Mattel has registered over 60 marks comprising the word “Barbie,” along with seventeen currently pending trademark applications, for a vast array of goods, from downloadable entertainment to sanitary masks! Many of these marks include the word “Barbie,” along with additional wording, expanding on the scope of protection of the Barbie brand.
While not an officially registered trademark, Pantone 219C, or “Barbie Pink,” is just as famous, if not more, than the word “Barbie.” From the pink packages that Barbie dolls reside in, to the pink wonderland of Barbie World, Pantone 219C is synonymous with Barbie. “Barbie Pink” is so universally known that billboards donned simply with Pantone 219C pink were used to advertise the now-released blockbuster “Barbie.”[9] It is fascinating that a simple color that is not even federally protected could become a brand’s most iconic mark.
While Mattel has stuck to its roots and continuously maintained its registration on the classic pink, handwritten logo “Barbie,” it has also expanded its trademark portfolio to different goods, services, and marks. In a world where brands, ideas, and technology are rapidly evolving, a company like Mattel is leveraging its brand power and name to create its own empire.
Brand-based intellectual property strategy
According to recent calculations by Brand Finance, a brand valuation firm conducted before the movie release, Barbie brand-specific IP is worth $701 million.[10] The CEO of Mattel, Ynon Kreiz, recognizes the company’s IP goldmine. “My thesis was that we needed to transition from being a toy-manufacturing company, making items, to an I.P. company, managing franchises.”[11] Kreiz decided to reclaim rights to create a movie starring the doll that it had previously licensed to various studios and had its newly formed film division, spearheaded by Robbie Brenner, create the current Barbie film.[12] Brenner has pointed out that brand awareness is valuable, “[i]n the world we’re living in, I.P. is king.”[13]
Mattel is using its Barbie IP to create new IP. Trademarks are no longer merely being used as a source indicator to identify the doll as being manufactured by Mattel. The trademarks the Barbie brand covers are used to create copyrightable works, such as the Barbie movie. This stands in contrast to, for example, the Harry Potter film franchise, which was created based on the book series, and later developed into a multibillion-dollar franchise composed of, among other things, merchandise, foods, theme parks, and a new movie franchise.[14] Barbie does not have a specific story, which gave the director of the Barbie movie, Greta Gerwig, much freedom when creating the storyline for the film.
Mattel is not the only toy company to use its brands to create wildly successful movies. Hasbro, Inc. (“Hasbro”) was able to develop a multibillion-dollar movie franchise based on its (then) struggling toy-robot line, Transformers. However, IP-based filmmaking can have negative repercussions. Hasbro, for example, had a six-year deal with Universal City Studios LLC (“Universal”) to film rights for various other toy and game brands, such as Monopoly, Candy Land, and Battleship.[15] This long-term partnership failed, as the (proposed) movies based on board games were not well-received.[16] Further, any film based on IP could be received negatively, which could cause harm to the brand and lead to a decline in sales of the associated product or service. Mattel has forty-five films based on its IP in development, ranging from a Magic 8 Ball horror film to a franchise centered around Hot Wheels.[17] Time will tell if those movies have the same effect as the Barbie blockbuster.
Mattel is giving a master class on utilizing every aspect of a brand, creating new IP based on existing IP, strengthening existing brands, and making a brand relevant again. It will be interesting to see how the movie affects the future valuation of the Barbie brand. Barbie has long been an essential player in the intellectual property landscape and is one of the most valuable toy brands in the world.[18] If Mattel’s new business growth strategy is to continue to rely on its IP, it’s fitting that Mattel’s queen, Barbie, be the leader of that effort.
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[1] Brooks Barnes, ‘Barbie’ Reaches $1 Billion at the Box Office, Studio Says, The New York Times (Aug. 6, 2023),https://www.nytimes.com/2023/08/06/movies/barbie-1-billion-box-office.html.
[2] Tamison O’Connor, Breaking Down the Barbie Phenomenon, From Mattel to Chanel, The Business of Fashion (July 20, 2023), https://www.businessoffashion.com/articles/retail/breaking-down-the-barbie-phenomenon-from-mattel-to-chanel.
[3] AirBnB, Welcome to Barbie’s Malibu DreamHouse – Ken’s Way!, AirBnB, https://www.airbnb.com/rooms/857387972692815761 (last visited Aug. 7, 2023).
[4] Supra, note 2.
[5] Mattel, Inc. v. Greiner & Hausser GmbH, 354 F.3d 857, 860 (9th Cir. 2003).
[6] Mariana Hazt Lencina, Barbie: this is not just a brand, inventa (Aug. 3, 2023), https://inventa.com/en/news/article/895/barbie-this-is-not-just-a-brand.
[7] Mattel, Inc. v. MCA Recs., Inc., 296 F.3d 894 (9th Cir. 2002).
[8] Chris Molanphy, The Strange, True Story of Aqua’s “Barbie Girl”, Slate (Jul. 21, 2023), https://slate.com/culture/2023/07/barbie-girl-song-movie-aqua-nicki-minaj-ice-spice.html.
[9] The Fashion Law, Barbie Pink, What Do Mattel’s Rights in the Valuable Color Look Like?, The Fashion Law (Aug. 8, 2023), https://www.thefashionlaw.com/barbie-pink-what-is-it-and-what-do-mattels-trademark-right-look-like.
[10] Rosie Mallory, Barbie’s Brand’s Back!, Brand Finance (Aug. 2, 2023), https://brandfinance.com/insights/barbies-brands-back.
[11] Alex Barasch, After “Barbie,” Mattel is Raiding its Entire Toybox, The New Yorker (July 2, 2023), https://www.newyorker.com/magazine/2023/07/10/after-barbie-mattel-is-raiding-its-entire-toybox.
[12] Id.
[13] Id.
[14] Taylor Rains, I’ve visited every official Harry Potter attraction in the world and saw how the franchise ballooned into an empire raking in billion, Insider (Dec. 18, 2021), https://www.businessinsider.com/harry-potter-is-still-multibillion-dollar-empire-after-two-decades-2021-11.
[15] Barasch, supra, note 11.
[16] Id.
[17] Sam Forsdick, From Barbie, to Pop Tarts, how brands became the new Hollywood stars, Raconteur (July 20, 2023), https://www.raconteur.net/growth-strategies/barbie-movie-brands-hollywood-stars.
[18] Mallory, supra, note 10.