Judge Says Artist Can Make Fun of Barbie

By BILL WERDE

Published: June 28, 2004

Seven years ago when Tom Forsythe, an artist and photographer, was searching for a subject for a new project, he settled on Barbie, ultimately producing a series of 78 photographic images of the wildly famous doll showing her nude, and sometimes posed provocatively, in or around various household appliances.
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"Plaintiff had access to sophisticated counsel who could have determined that such a suit was objectively unreasonable and frivolous," Judge Lew wrote in his order. "Instead it appears plaintiff forced defendant into costly litigation to discourage him from using Barbie's image in his artwork. This is just the sort of situation in which this court should award attorneys fees to deter this type of litigation which contravenes the intent of the Copyright Act.''

The order also characterized Mattel's claim of trademark infringement as "groundless and unreasonable.''

Jonathan Zittrain, a professor at Harvard Law School who specializes in Internet and copyright law, said, "It's enough to give corporations with brands they want to protect and expand pause to consider whether to simply reflexively unleash the hounds the minute they see somebody doing something that relates to their brand of which they don't approve.

"It may send a signal that a 'take no prisoner' litigation strategy against the little guy has new risks for the plaintiff," he said.

The Copyright Act allows for tens of thousands of dollars in statutory damages per violation. Professor Zittrain said the risk of such damages "chills'' many defendants, even if they have a strong case.

"Maybe now when an angry C.E.O. picks up the phone to counsel and says 'sue this guy,' " he said, "instead of saluting and sending the bill, the lawyer may say 'I have to warn you, this could boomerang.' "