FOR PUBLICATION UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT MATTEL INC a Delaware Corporation Plaintiff Appellant v WALKING MOUNTAIN PRODUCTIONS a California Business Entity TOM FORSYTHE an individual d b a Walking Mountain Productions Defendants Appellees MATTEL INC a Delaware Corporation Plaintiff Appellee v WALKING MOUNTAIN PRODUCTIONS a California Business Entity TOM FORSYTHE an individual d b a Walking Mountain Productions Defendants Appellants No 01 56695 C D Cal No CV 99 08543RSWL N D Cal No CV 01 0091 Misc WHA No 01 57193 C D Cal No CV 99 08543RSWL N D Cal No CV 01 0091 Misc WHA OPINION Appeal from the United States District Court for the Central District of California Ronald S W Lew District Judge Presiding and United States District Court for the Northern District of California William H Alsup District Judge Presiding Argued and Submitted March 6 2003 Pasadena California 18165 18166 MATTEL INC v WALKING MOUNTAIN PRODUCTIONS Filed December 29 2003 Before 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 District Court for the District of Columbia sitting by designation 18170 MATTEL INC v WALKING MOUNTAIN PRODUCTIONS COUNSEL Adrian M Pruetz argued Michael T Zeller Edith Ramirez and Enoch Liang Quinn Emanuel Urquhart Oliver Hedges LLP Los Angeles California for the plaintiff appellantcross appellee Annette L Hurst argued Douglas A Winthrop and Simon J Frankel Howard Rice Nemerovski Canady Falk Rabkin APC San Francisco California and Peter J Eliasberg ACLU Los Angeles California for the defendants appelleescross 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 Francisco Museum of Modern Art OPINION PREGERSON Circuit Judge In the action before us Plaintiff Mattel Corporation asks us to prohibit Defendant artist Thomas Forsythe from producing MATTEL INC v WALKING MOUNTAIN PRODUCTIONS 18171 and selling photographs containing Mattel s Barbie doll Most of Forsythe s photos portray a nude Barbie in danger of being attacked by vintage household appliances Mattel argues that his photos infringe on their copyrights trademarks and trade dress We have jurisdiction pursuant to 28 U S C 1291 and affirm the district court s grant of summary judgment to Forsythe BACKGROUND Thomas Forsythe aka Walking Mountain Productions is a self taught photographer who resides in Kanab Utah He produces photographs with social and political overtones In 1997 Forsythe developed a series of 78 photographs entitled Food Chain Barbie in which he depicted Barbie in various absurd and often sexualized positions 1 Forsythe uses the word Barbie in some of the titles of his works While his works vary Forsythe generally depicts one or more nude Barbie dolls juxtaposed with vintage kitchen appliances For example Malted Barbie features a nude Barbie placed on a vintage Hamilton Beach malt machine Fondue a la Barbie depicts Barbie heads in a fondue pot Barbie Enchiladas depicts four Barbie dolls wrapped in tortillas and covered with salsa in a casserole dish in a lit oven In his declaration in support of his motion for summary judgment Forsythe describes the message behind his photographic series as an attempt to critique the objectification of women associated with Barbie and to lambast the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies He explains that he chose to parody Barbie in his photographs because he believes that Barbie is the most enduring of those products that feed on the insecurities of our beauty and 1 Forsythe possessed slides of 386 additional photographs that he never published distributed or sold because he considered them inadequate for the series 18172 MATTEL INC v WALKING MOUNTAIN PRODUCTIONS perfection obsessed consumer culture Forsythe claims that throughout his series of photographs he attempts to communicate through artistic expression his serious message with an element of humor Forsythe s market success was limited He displayed his works at two art festivals the Park City Art Festival in Park City Utah and the Plaza Art Fair in Kansas City Missouri 2 He promoted his works through a postcard a business card and a website Forsythe printed 2000 promotional postcards depicting his work Barbie Enchiladas only 500 of which were ever circulated Of those that were circulated some were distributed throughout his hometown of Kanab and some to a feminist scholar who used slides of Forsythe s works in her academic presentations He also sold 180 of his postcards to a friend who owned a book store in Kanab so she could resell them in her bookstore and sold an additional 22 postcards to two other friends Prior to this lawsuit Forsythe received only four or five unsolicited calls inquiring about his work The Food Chain Barbie series earned Forsythe total gross income of 3 659 3 Forsythe also produced 1 000 business cards which depicted Champagne Barbie His name and self given title Artsurdist were written on the card He used these cards at fairs and as introductions to gallery owners Finally Forsythe had a website on which he depicted low resolution pictures of his photographs The website was not configured for online purchasing Tom Forsythe s Artsurdist 2 Additionally Forsythe s works were chosen for display in various exhibitions including the Dishman Competition at Lamar University in Texas and the Through the Looking Glass Art Show in Los Alamos New Mexico Some of his Food Chain Barbie photographs were also selected for exhibition by the Deputy Director and Chief Curator of the Guggenheim Museum of Modern Art in New York 3 Purchases by Mattel investigators comprised at least half of Forsythe s total sales MATTEL INC v WALKING MOUNTAIN PRODUCTIONS 18173 Statement in which he described his intent to critique and ridicule Barbie was featured on his website His website also contained a prominent link to his biography On August 23 1999 Mattel filed this action in the United States District Court for the Central District of California the Los Angeles federal district court against Forsythe alleging that Forsythe s Food Chain Barbie series infringed Mattel s copyrights trademarks and trade dress Forsythe filed a motion to dismiss Mattel s First Amended Complaint which was granted with leave to amend
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