Are Barbie dolls a no-go for commercial art photography?

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Sajah
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Are Barbie dolls a no-go for commercial art photography?

Post by Sajah »

Hi, I've posted a few times previously on this forum previously with questions around using fashion and other dolls in art photography, for commercial use i.e. selling the photos via online platforms and in exhibitions. The advice I've previously been given has been to the effect that mass-produced items such as dolls are not normally subject to copyright under UK law unless they are made wholly or partly by hand, with an artistic intention in mind, even if they are branded/trademarked. I've recently been looking at various Barbie dolls and have received some free legal advice online elsewhere to the effect that Mattel are likely to pursue legal action for copyright/design right/trademark infringement against any photographers/artists using their dolls in images for commercial gain, which I assume would include photographers/artists based in the UK. GIven this, do you think it would still be safe for me to proceed with using Barbie dolls in my photos if I wanted to advertise them for sale, even if I did not use the Barbie name in any of the titles/descriptions of the photos? Many thanks.
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AndyJ
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Re: Are Barbie dolls a no-go for commercial art photography?

Post by AndyJ »

Hi sajah, nice to hear from you again.

I think you know by now what the law in general says about this kind of photography. So what I think you are asking is: how likely is it that Mattel will come after you if you do try to sell images featuring Barbie. Unfortunately I can't give you an answer, and even if I could, you would be most unwise to rely on my opinion when making your decision.

What I can say is that Mattel ranks among the more aggressive defenders of intellectual property rights, and altough their experience in the (mainly US) courts has been mixed, I don't think this has dented their enthusiasm for, as they see it, protecting their brand. So I would expect that eventually once they found out about your photographs you might well receive a few stiffly worded letters threatening all sorts of dire things, to get you to cease and desist. Whether they were truly after damages and were prepared to take things all the way to court is debateable, but you might find the whole process stressful, could take up a lot of your time, and, ultimately, might involve you in significant legal costs before they backed off.

I suppose my final comment would be, why do you want to use a Barbie, as opposed to another, less famous brand? If your intention is parody or some sort of criticism of what Barbie stands for, then the law will offer you some protection to do this. However if your motives are more simply aligned with the fact it's a recognisable brand, then I think caution is required.
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Re: Are Barbie dolls a no-go for commercial art photography?

Post by Sajah »

Hi Andy,

Thanks for your reply and nice to hear from you again too.

Of course I've heard about other photographers/artists who have used Barbie dolls in their work receiving the 'cease and desist' letters from Mattel, but was uncertain whether this was due to them depicting the dolls in ways that could be deemed to tarnish the reputation of the brand. I've also heard that there may be issues with using 'trademarked' dolls e.g. Barbie and Ken, Disney character dolls in photographs for commercial gain, but again was unsure whether this was true.

The reasons for my interest in using Barbie dolls in my photographs is neither because I wish to have any association with the brand or for parody - my photos are about expressionism and nature, and I would never include any material likely to offend. The main reasons are the following 1. Cost/affordability - it is very easy to find Barbie dolls online, including on Ebay, as well as in charity shops 2. Availability - they are obviously very widely available 3. Aesthetic appeal - the dolls come in a huge range of skin and hair colours and ethnicities, not just the classic instantly recongisable white blonde Barbie and Ken characters featured in the hit film - and I wouldn't want to use these characters in my photos anyway 4. Poseability - some ranges of Barbie dolls are articulated/poseable, which is essential for the type of photography I do.

In addition, Mattel seem to positively encourage photographing of the dolls, especially from the Barbie Looks range, and there are millions of people photographing and posting photos of Barbie dolls on social media every day. From what you've said previously, this would not constitute either copyright or design right infringement under UK law. So if it's okay to photograph the dolls, then where exactly does the ban on selling photographs of them come in?

Any further advice welcome. Many thanks.
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Re: Are Barbie dolls a no-go for commercial art photography?

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Hi sajah,

Thanks for the clarification on why you would like to use the Barbie dolls. On that basis (or range of reasons), I assume that it is not essential for you to actually state that the figures are 'Barbie' or 'Ken'. By omitting the name which is the major trademark, you would remove all reasonable grounds for a claim of trade mark infringement. This would also remove the need to fall back on the defense that the mark is being used descriptively.

On the issue of design right protection, this is not at all relevant, since you would not be creating or offering for sale a three dimensional object which copied or resembled the design in a Barbie doll. You would merely be reproducing the actual real item photograpically (ie in 2-D) which comes nowhere close to infringing design right.

That just leaves copyright. As we discussed in a previous thread, manufactured goods like Barbie dolls wouild be highly unlikely to attract copyright because they are not artistic works more generally, and not works of artistic craftsmanship in particular, since there is neither any human craftsmanship involved in their making, nor any intention on the part of the manufacturer that they are works of artistic creativity in the accepted legal sense. That is to say, they are not sculptures. Since copyright would almost certainly not apply, it follows that there would be no grounds for claiming infringement of the author's moral right not to have his/her work treated in a derogatory manner.

That is a brief summary of the legal position. However watertight that might sound, it doesn't completely ensure that you won't get any threatening letters from Mattel's lawyers. It only costs them a few hundred pounds to send out such letters, which might allege all kinds of infringement, even though a court would ultimately find that there was no case to answer. Going further with regard to copyright claims, there is nothing in law to prevent the making of unjustified threats of this type, and in any case the sort of lawyers Mattel is likely to use would ensure that they have 'reasonable' grounds for their claims and avoid any direct 'threats'. And when it comes to unjustified threats with regard to trade marks or designs (which have been legislated against), most correspondence from emanating from a lawyer would be exempt from the protection against such threats (see the Intellectual Property (Unjustified Threats) Act 2017).
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Re: Are Barbie dolls a no-go for commercial art photography?

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Hi again Andy,

Thanks for your further reply and the link to the Intellectual Property Unjustified Threats Act 2017 (that's one I hadn't heard of before!)

No, I would never include the names Barbie or Ken (or any of the other Barbie characters) anywhere in the titles of my photographs, and as previously mentioned, I would not want to use the 'classic' blonde Barbie/Ken dolls.

I'm afraid I'm not good at reading/understanding legal terminology, especially in large quantities, so found it difficult to take in all the points of the Act, which seems (if I have got it right) to be a revision of earlier legislation. So you are basically saying that the above Act allows lawyers acting for large toy companies to make 'indirect' threats regarding trademark infringement (as design right/copyright infringement would not apply to using the dolls in fine art photography in the UK), even though these may be unjustified? And an 'indirect' threat would be likely to be in the form of a 'cease and desist' letter, or series of letters, before they took the next step of starting legal action (if indeed they did)?

I wonder if they have any lawyers based in the UK?
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Re: Are Barbie dolls a no-go for commercial art photography?

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Hi Sajah,

Yes. you are right the Intellectual Property (Unjustified Threats) Act is largely a rehash of the existing law. Its main aim was deter larger companies from suing each other over trivial or non-existent infringements of patents, especially where a very large company was being sued by a very small entity in a so-called patent trolling operation. Since cost of defending these sorts of claims can easiily run into six figures, the large company might well be inclined to pay off the small company just to not have to run up those bills, even though the actual infringement claim was entirely spurious.

Anyway, to return to your issue, most lawyers are smart enough not issue threats as such, and a strongly worded cease and desist letter would usually fall outside the ambit of the Act.

And on your final point, Mattel undoubtedly have UK lawyers, and will probably also employ a company to search for instances of their intellectual property being used/sold on the internet and elsewhere. That is standard practice by any company with a moderate to large intellectual property portfolio.
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Re: Are Barbie dolls a no-go for commercial art photography?

Post by Sajah »

Hi Andy,

Thanks for this. All things considered, from what you've said it sounds like it's probably best if I steer clear of using any kind of Barbie doll in my work, then :-( though it doesn't really seem fair that where artists who are doing nothing unlawful in the way they are using dolls/toys in their work should be threatened with legal action by lawyers for large companies, especially where there is no copyright or design right infringement going on.
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Re: Are Barbie dolls a no-go for commercial art photography?

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Sajah,

You may be interested in this recent case from Denmark where the court was asked to decide on the issue of trade mark rights versus freedom of expression: IPKat.
Although there are some major differences between the facts in that case and your situation (not least that of motivation), the case does demonstrate how the courts try to evaluate the balance between the two contrasting positions. As I think I may have mentioned in the earlier thread, there is no defence for parody or similar justification per se under trade mark law (both national and international), but the wider freedom of (artistic) expression argument comes from outside the statute law and relies in part on Article 10 of the European Convention on Human Rights. As can be seen in this case, the court did not feel that the artist's Article 10 rights outweighed the trade mark owner's right to protect his mark. However the law is by no means settled in this area.
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Re: Are Barbie dolls a no-go for commercial art photography?

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Hi Andy,

Thanks for the link - all very interesting, and makes me even more cautious. It would be good to know whether Mattel have ever taken action against any artists/photographers based in the UK using their dolls in their artwork, and what the outcome(s) was/were if so, but I guess the same trademark laws and legal precedents re: rights of artists' expression vs rights of companies to protect their trademarked products would still apply, if the trademark laws behind them are applicable worldwide rather than just in the US/EU?
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Re: Are Barbie dolls a no-go for commercial art photography?

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Trade mark laws are national in their extent, but there are various international treaties which provide an overall framework, so the law found in the US, EU and UK is very similar. In the case of the UK, for historical reasons, our law is largely the same as EU law as embodied in the Trade Mark Directive (Directive (EU) 2015/2436) and Council Regulation (EC) No 207/2009.
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Re: Are Barbie dolls a no-go for commercial art photography?

Post by Sajah »

Hi Andy,

Many thanks for the links re: trademark law.

I just have one more question (hope that's okay?) Do you think Mattel (or any other similar large international doll manufacturer) would be likely to be willing to grant me as an art photographer a licence to photograph their dolls and sell them if I were to contact them and clearly outline the type of photographs I would be taking i.e. ones which would not use, parody or denegrate the Barbie name or brand, do you have any idea how much obtaining such a license would cost, if so? Just thought it might be worth a try since, if there was a legally-written agreement in place, they couldn't then threaten me with trademark (or any other type of) infringement, and they would be getting paid too, of course.

Thank you.
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Re: Are Barbie dolls a no-go for commercial art photography?

Post by AndyJ »

Hi sajah,

I'm sorry but I don't know if Mattel would consent to such a licence. It would certainly be worth asking them. And of course if they did agree to grant you a licence you would be protected from any threats, provided that you stayed within the terms of the licence. Again I have no idea whether they would charge you for the licence and if so, how much it would cost.
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Re: Are Barbie dolls a no-go for commercial art photography?

Post by Sajah »

Hi Andy,

That's okay, it was just a thought. Like you say, I think it would be worth asking.
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