Mattel, Inc. v. Walking Mountain Productions, et al.

The Situation

Artist Tom Forsythe used Barbie dolls in a series of photos as commentary on "America's culture of consumption and conformism." Mattel, Inc. sued, alleging copyright infringement.

NERA's Role

Acting pro bono on behalf of the artist defendant, Alan Cox, Senior Vice President in NERA's San Francisco office, prepared an Expert Report which he defended at deposition. Dr. Cox demonstrated that the photographs were not in the same product market as Barbie dolls, other Mattel products or products of Mattel's current or potential licensees. The report thus addressed one of the statutory factors in the fair use defense: "the effect of the use upon the potential market for or value of the copyrighted work."

The Result

The United States District Court for the Central District of California dismissed the suit, ruling that Mr. Forsythe's photographs were not substitutes for Mattel's products or those of its licensees. On 29 December 2003, the Ninth Circuit Court of Appeals rejected Mattel Inc.'s appeal of the lower court ruling, upholding the right of Forsythe to make unauthorized use of images of Barbie dolls in his satirical photographs. The Court of Appeals appeared to agree with Dr. Cox's conclusion, stating that "it is highly unlikely that [Forsythe's work] will substitute for products in Mattel's markets or the markets of Mattel's licensees."