Posted On: July 22, 2010 by Melvin N.A. Avanzado

ENTERTAINMENT LITIGATION: THE BRATZ BEAT BACK BARBIE ON APPEAL

NINTH CIRCUIT OVERTURNS MATTEL'S TRIAL COURT VICTORY AGAINST MGA ENTERTAINMENT IN BATTLE OF THE DOLLS

The Ninth Circuit Court of Appeals filed an opinion today reversing a multi-million dollar verdict and injunction in favor of Mattel, maker of Barbie dolls, against upstart competitor MGA Entertainment which makes the Bratz doll line. The case has garnered much attention as two highly popular doll lines and their manufacturers battled each other in federal court in Los Angeles. Chief Judge Alex Kozinski's entertaining opinion today likely will have far reaching consequences beyond toymakers -- affecting copyright infringement, trademark infringement and constructive trust litigation.

You can read and download Judge Kozinski's opinion here. More on his opinion after the jump.

THE BRATZ WIN THE APPEAL TO SURVIVE TO COMPETE AGAINST BARBIE

Mattel's victory in the trial court was complete -- "winning virtually every point below." Mattel received a jury verdict of $10 million (of the $1 billion in copyright damages it sought) but more importantly obtained a constructive trust over all of the trademarks relating to MGA's Bratz branded products -- the Bratz dolls, doll accessories and even Bratz the movie. The trial court also prohibited MGA from marketing or producing its highly successful Bratz dolls. As Judge Kozinski put it, "[i]n effect, Barbie captured the Bratz. The Bratz appeal."

The most important portion of Judge Kozinski's opinion -- as it pertains to entertainment and intellectual property litigation -- takes the district court, Judge Stephen G. Larson, to task over his findings concerning what is protectible under copyright law. (Since his opinion in the case, Judge Larson resigned his lifetime appointment as district court judge in 2009 citing his low salary as the reason. Judge Larson is now in private practice in Los Angeles.) Judge Kozinski found that many of the elements of the Bratz dolls to be unprotectible and reaffirmed the principle that copyrights "cover only the particular expression of the bratty-doll idea, not the idea itself." Judge Kozinski continued that "Degas can't prohibit other artists from painting ballerinas, and Charlaine Harris can't stop Stephanie Meyer from publishing Twilight just because Sookie came first."

Judge Kozinski left it for Judge Larson's successor to decide what actually becomes of the district court decision. But Judge Kozinski made clear that "it's likely that a significant portion -- if not all -- of the jury verdict and damage award should be vacated, and the entire case will probably need to be retried [and] that any further proceedings must be consistent with our decision."

TAKEAWAY FROM THE NINTH CIRCUIT'S DECISION

What comes through loud and clear from Judge Kozinski's opinion is the suspicion that Mattel initiated this lawsuit -- against a former employee and one of the only significant challengers to its Barbie dolls -- to stifle competition. The Ninth Circuit was unwilling to allow the use of copyright principles -- expanded to encompass what it viewed as "unprotectable elements." "When works of art share an idea, they'll often be 'similar' in the layman's sense of the term . . . but that's not the sort of similarity we look for in copyright law. 'Substantial similarity' for copyright infringement requires a similarity of expression, not ideas."

While the concept of an unprotectable idea under copyright law is not new, the Ninth Circuit's detailed analysis of the "idea" in the context of this war of dolls could be significant and provide a road map over what is an "idea" versus what constitutes "expression." More importantly, Judge Kozinski may have hinted at his intentions in his closing line: "America thrives on competition; Barbie, the all-American girl, will too."

Amen, your honor. Amen.

The Entertainment Litigation Blog is published by Melvin N.A. Avanzado, an entertainment litigator and civil trial lawyer in Los Angeles. Mel is an accomplished trial lawyer with over 20 years experience. Mel's practice includes extensive experience representing plaintiffs and defendants in complex disputes, including the representation of motion picture studios, television networks, media companies, and significant individuals in the entertainment and sports industries.

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