FOR PUBLICATIONUNITED STATES COURT OF APPEALSFOR THE NINTH CIRCUIT MATTEL INC., a DelawareCorporation, No. 01-56695Plaintiff-Appellant,C.D. Cal. No.v. CV-99-08543-RSWLWALKING MOUNTAIN PRODUCTIONS,a California Business Entity; TOMN.D. Cal. No.FORSYTHE, an individual d/b/a CV-01-0091Walking Mountain Productions, Misc. WHADefendants-Appellees. MATTEL INC., a DelawareNo. 01-57193Corporation,C.D. Cal. No.Plaintiff-Appellee,CV-99-08543-v.RSWLWALKING MOUNTAIN PRODUCTIONS,N.D. Cal. No.a California Business Entity; TOMCV-01-0091FORSYTHE, an individual d/b/aMisc. WHAWalking Mountain Productions,OPINIONDefendants-Appellants.Appeal from the United States District Courtfor the Central District of CaliforniaRonald S.W. Lew, District Judge, PresidingandUnited States District Courtfor the Northern District of CaliforniaWilliam H. Alsup, District Judge, PresidingArgued and SubmittedMarch 6, 2003—Pasadena, California18165Filed December 29, 2003Before: Harry Pregerson and Sidney R. Thomas,Circuit Judges, and Louis F. Oberdorfer,Senior District Judge.*Opinion by Judge Pregerson *The Honorable Louis F. Oberdorfer, Senior Judge, United States Dis-trict Court for the District of Columbia, sitting by designation. 18166 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONSCOUNSELAdrian M. Pruetz (argued), Michael T. Zeller, Edith Ramirezand Enoch Liang, Quinn Emanuel Urquhart Oliver & Hedges,LLP, Los Angeles, California, for the plaintiff-appellant-cross-appellee. Annette L. Hurst (argued), Douglas A. Winthrop and SimonJ. Frankel, Howard, Rice, Nemerovski, Canady, Falk & Rab-kin, APC, San Francisco, California, and Peter J. Eliasberg,ACLU, Los Angeles, California, for the defendants-appellees-cross-appellants. Annette L. Hurst, Douglas A. Winthrop and Simon J. Frankel,Howard, Rice, Nemerovski, Canady, Falk & Rabkin, APC,San Francisco, California, for non-party San FranciscoMuseum of Modern Art. OPINIONPREGERSON, Circuit Judge: In the action before us, Plaintiff Mattel Corporation asks usto prohibit Defendant artist Thomas Forsythe from producing18170 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONSand selling photographs containing Mattel’s “Barbie” doll.Most of Forsythe’s photos portray a nude Barbie in danger ofbeing attacked by vintage household appliances. Mattelargues that his photos infringe on their copyrights, trade-marks, and trade dress. We have jurisdiction pursuant to 28U.S.C. § 1291 and affirm the district court’s grant of sum-mary judgment to Forsythe. BACKGROUNDThomas Forsythe, aka “Walking Mountain Productions,” isa self-taught photographer who resides in Kanab, Utah. Heproduces photographs with social and political overtones. In1997, Forsythe developed a series of 78 photographs entitled“Food Chain Barbie,” in which he depicted Barbie in variousabsurd and often sexualized positions.1 Forsythe uses theword “Barbie” in some of the titles of his works. While hisworks vary, Forsythe generally depicts one or more nude Bar-bie dolls juxtaposed with vintage kitchen appliances. Forexample, “Malted Barbie” features a nude Barbie placed ona vintage Hamilton Beach malt machine. “Fondue a la Bar-bie” depicts Barbie heads in a fondue pot. “Barbie Enchila-das” depicts four Barbie dolls wrapped in tortillas andcovered with salsa in a casserole dish in a lit oven. In his declaration in support of his motion for summaryjudgment, Forsythe describes the message behind his photo-graphic series as an attempt to “critique[ ] the objectificationof women associated with [Barbie], and [ ] [to] lambast[ ] theconventional beauty myth and the societal acceptance ofwomen as objects because this is what Barbie embodies.” Heexplains that he chose to parody Barbie in his photographsbecause he believes that “Barbie is the most enduring of thoseproducts that feed on the insecurities of our beauty and1Forsythe possessed slides of 386 additional photographs that he neverpublished, distributed, or sold because he considered them inadequate forthe series. 18171MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONSperfection-obsessed consumer culture.” Forsythe claims that,throughout his series of photographs, he attempts to commu-nicate, through artistic expression, his serious message withan element of humor. Forsythe’s market success was limited. He displayed hisworks at two art festivals — the Park City Art Festival in ParkCity, Utah, and the Plaza Art Fair in Kansas City, Missouri.2He promoted his works through a postcard, a business card,and a website. Forsythe printed 2000 promotional postcardsdepicting his work, “Barbie Enchiladas,” only 500 of whichwere ever circulated. Of those that were circulated, some weredistributed throughout his hometown of Kanab and some to afeminist scholar who used slides of Forsythe’s works in heracademic presentations. He also sold 180 of his postcards toa friend who owned a book store in Kanab so she could resellthem in her bookstore and sold an additional 22 postcards totwo other friends. Prior to this lawsuit, Forsythe received onlyfour or five unsolicited calls inquiring about his work. The“Food Chain Barbie” series earned Forsythe total grossincome of $3,659.3 Forsythe also produced 1,000 business cards whichdepicted “Champagne Barbie.” His name and self-given title“Artsurdist” were written on the card. He used these cards atfairs and as introductions to gallery owners. Finally, Forsythe had a website on which he depicted lowresolution pictures of his photographs. The website was notconfigured for online purchasing. “Tom Forsythe’s Artsurdist2Additionally, Forsythe’s works were chosen for display in variousexhibitions, including the Dishman Competition at Lamar University inTexas, and the Through the Looking Glass Art Show in Los Alamos, NewMexico. Some of his “Food Chain Barbie” photographs were also selectedfor exhibition by the Deputy Director and Chief Curator of the Guggen-heim Museum of Modern Art in New York. 3Purchases by Mattel investigators comprised at least half of Forsythe’stotal sales. 18172 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONSStatement,” in which he described his intent to critique andridicule Barbie, was featured on his website. His website alsocontained a prominent link to his biography. On August 23, 1999, Mattel filed this action in the UnitedStates District Court for the Central District of California (the“Los Angeles federal district court”) against Forsythe, alleg-ing that
View Full Document
Unlocking...