As published by the South African Council for Business Women
Let’s be honest, you read the title in the iconic Barbie voice. If you have, you certainly came across the right article. If not, you can still proceed to read this article. Barbie has certainly taken the world by storm since its debut in 1959. Women all around the world have idolized the image of being like Barbie and there is no doubt that the newly released Barbie movie has only elevated the ‘fangirling’ moments for many individuals. Many see this as the perfect opportunity to jump on the Barbie products selling trend, whether it be physical or digital products. However, what most individuals fail to realise is that certain procedures must be followed in order to avoid infringement of the intellectual property rights associated with the Barbie brand, currently owned by the American company, Mattel Incorporated. Anything from Barbie branded clothing, toys, to cosmetics and stationery are protected by a form of intellectual property and usage thereof without obtaining proper consent can lead to an infringement of the intellectual property rights which Mattel holds in the Barbie brand.
Barbie’s Intellectual Property
Barbie consists of various forms of protected intellectual property, such as, trade marks, copyrights, designs and patents. Intellectual property refers to the creations of your mind, such as designs, inventions, images, names, symbols, and literary and artistic works which are used in commerce. All forms of intellectual property are capable of being protected by law by, for example, registering a trade mark, design or patent. In South Africa, copyright is afforded automatically and it is not possible to obtain registration of copyright works, save for cinematograph films.
The famous pink Barbie logo, as depicted below, is a registered trade mark which has been used by Mattel since 1959. In South Africa, Mattel is the registered proprietor of various trade marks, including the names “Barbie” and “Ken” in class 28.
In 1961, the first Barbie patent was accepted for a doll construction, which invention related to a doll being supported by a base ensuring that an upright, balanced and realistic position is maintained by the doll when not in use.
All of Mattel’s intellectual property rights affords them the exclusive rights to sell any Barbie brand products and may prevent others from doing so without their consent. Intellectual property rights afford the proprietor of the rights, protection to prevent third parties from making any use of the intellectual property without authorisation.
A trade mark, for example, is in essence a means to identify a specific product or business and its function is to distinguish the goods and/or services of one trader from the goods and/or services of another trader in the same sector. A registered trade mark therefore provides the proprietor with protection against unauthorised usage of the trade mark by a third party. There are a number of reasons why you should register a trade mark, however, the most prominent being to prevent others from ‘copycatting’ your brand or representing themselves as being the owner of your brand. Should the aforementioned take place, the trade mark proprietor, or the registered user thereof, may institute trade mark infringement proceedings against the infringing third party.
Mattel’s various Barbie brand trade marks therefore affords it with the exclusive use and enjoyment of the Barbie brand in commerce, unless Mattel provides its consent to a third party to make use of the trade marks.
Barbie License Agreements
Now that you know that the Barbie brand is protected by various forms of intellectual property, we turn to how you can obtain consent from Mattel to sell Barbie branded products.
The entrepreneur inside of you might have been jumping for joy at the thought of capitalising on the Barbie brand with some of your very own Barbie products! However, things are never as easy as the world of Barbie may have you believe.
The first step in selling any products which depicts the Barbie logo, name or branding, is to approach the proprietor of the intellectual property rights, Mattel. In order to ensure that you have the necessary consent to proceed to depict the Barbie logo, name or branding, a license agreement will have to be entered into with Mattel. In essence, a license agreement allows you as the licensee to make use of, or generate revenue from the property of the licensor, in this case, Mattel. A license agreement is beneficial for both the licensee and the licensor for, inter alia, the following reasons:
- The licensor will be able to exercise control over their intellectual property rights;
- The licensee will be able to make use of the property of the licensor and generate revenue;
- The terms and conditions regulating the relationship between the licensor and the licensee are reduced to writing and ensures that confusion is avoided;
- The use of the intellectual property by the licensee is compliant with all of the intellectual property laws and ensures that the licensee cannot be held liable of infringement.
Brands such as ALDO Shoes, Superga, Crocs, Hasbro, Burger King Brazil, O.P.I and NYX Cosmetics have all identified the opportunity to make an extra dollar or two off the Barbie brand and entered into license agreements with Mattel to provide the public with various Barbie collaboration products.
It is therefore possible for any person or entity to sell Barbie products, on the condition that you have obtained the necessary consent from Mattel in the form of a written license agreement. You will then be regarded as compliant “kenough” to proceed to sell your Barbie branded products to the public!
Creative Barbie Products
You might be asking, what about creative Barbie products, such as cakes or even a song?
Technically speaking, the making of a cake depicting Barbie in any manner without Mattel’s authorisation results in the infringement of their intellectual property rights. However, American courts have previously ruled that the usage of Barbie by members of the public cannot be prevented as Barbie has become a modern icon. Therefore, the likelihood of South African Courts ruling against any home baker, or perhaps an established bakery, for their usage of the Barbie branding on their baked goods are slim. It is therefore not an easy task to prove the existence of infringement when the judicial system has already decided in favour of the public. However, this is not set in stone and Mattel may as well institute infringement proceedings against any party making use of their intellectual property without consent.
Turning to music, the song “Barbie Girl” by Aqua is well known around the world and was an instant hit upon its release in 1997. It was unfortunately not on Mattel’s list of favourite songs as they claimed that MCA Records Incorporated, Aqua’s American record label, infringed their Barbie trade mark rights and copyrights. The United States Court of Appeals, Ninth Circuit, ultimately ruled in favour of MCA Records Incorporated and held that the song was protected as a parody under the trade mark doctrine of nominative use.
It is evident from the above that the Barbie brand is well known worldwide and as a result, its usage on different products is popular across various industries. Mattel will therefore not be able to hold each and every person liable for infringement of its intellectual property rights since Barbie has become an icon of the modern age, surpassing mere intellectual property rights. However, there are limitations to this enjoyment by the public and each and every case must be considered on its own merits. The most important factor in Barbie infringement proceedings being the commercialisation of the Barbie brand by a third party without Mattel’s consent. Remember, money makes the world go round.
In law we live by the general rule that reducing agreements to writing is the best form of protection for all parties involved. It is therefore of utmost importance that you ensure that you have the necessary authority to make use of someone else’s intellectual property by signing a license agreement. This agreement will be your governing document throughout the period of usage of the intellectual property and will clearly define each party’s rights and obligations. Do not wait until you receive a formal notice of infringement, be compliant from the start. After all, you do want to keep what you have worked so hard on and invested your time and energy. Do not become a depressed Barbie because you did not follow the law, be an entrepreneurial Barbie who consults with her attorneys to ensure that she is compliant with the law and see her business grow!
At Stegmanns Incorporated we can assist you with all your commercial and intellectual property law needs. We can help you become “great at doing stuff”, just like Ken.
By: Marichelle Kuyper, attorney in the Intellectual Property Law and Commercial Law Department at Stegmanns Incorporated.
Sources:
- WIPO website (https://www.wipo.int/pressroom/en/stories/barbie-2023.html)
- Mattel Incorporated website (https://shop.mattel.com/collections/barbie)
- Burger King Brazil Instagram (@burgerkingbr)
- ALDO Shoes website (https://www.aldoshoes.co.za/)
- Crocs website (https://www.crocs.com/c/mattel/barbie)
- O.P.I website (https://www.opi.com/collections/opi-barbie-collection)
- Why Intellectual Property is Often (Literally) the “Icing on the Cake” by Irene Calboli