Mattel Inc., a Delaware Corporation v. Walking Mountain Productions, a California Business Entity Tom Forsythe, an Individual D/B/A Walking Mountain Productions, Mattel Inc., a Delaware Corporation v. Walking Mountain Productions, a California Business Entity Tom Forsythe, an Individual D/B/A Walking Mountain Productions

In the action before us, Plaintiff Mattel Corporation asks us to prohibit Defendant artist Thomas Forsythe from producing and selling photographs containing Mattel's "Barbie" doll. Most of Forsythe's photos portray a nude Barbie in danger of being attacked by vintage household appliances. Mattel argues that his photos infringe on their copyrights, trademarks, and trade dress. We have jurisdiction pursuant to 28 U.S.C. § 1291 and affirm the district court's grant of summary judgment to Forsythe.

Thomas Forsythe, aka "Walking Mountain Productions," is a self-taught photographer who resides in Kanab, Utah. He produces photographs with social and political overtones. In 1997, Forsythe developed a series of 78 photographs entitled "Food Chain Barbie," in which he depicted Barbie in various absurd and often sexualized positions.1 Forsythe uses the word "Barbie" in some of the titles of his works. While his works vary, Forsythe generally depicts one or more nude Barbie dolls juxtaposed with vintage kitchen appliances. For example, "Malted Barbie" features a nude Barbie placed on a vintage Hamilton Beach malt machine. "Fondue a la Barbie" depicts Barbie heads in a fondue pot. "Barbie Enchiladas" depicts four Barbie dolls wrapped in tortillas and covered with salsa in a casserole dish in a lit oven.

In his declaration in support of his motion for summary judgment, Forsythe describes the message behind his photographic series as an attempt to "critique[] the objectification of women associated with [Barbie], and [][to] lambast[] the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies." He explains that he chose to parody Barbie in his photographs because he believes that "Barbie is the most enduring of those products that feed on the insecurities of our beauty and perfection-obsessed consumer culture." Forsythe claims that, throughout his series of photographs, he attempts to communicate, through artistic expression, his serious message with an element of humor.

Forsythe's market success was limited. He displayed his works at two art festivals — the Park City Art Festival in Park City, Utah, and the Plaza Art Fair in Kansas City, Missouri.2 He promoted his works through a postcard, a business card, and a website. Forsythe printed 2000 promotional postcards depicting his work, "Barbie Enchiladas," only 500 of which were ever circulated. Of those that were circulated, some were distributed throughout his hometown of Kanab and some to a feminist scholar who used slides of Forsythe's works in her academic presentations. He also sold 180 of his postcards to a friend who owned a book store in Kanab so she could resell them in her bookstore and sold an additional 22 postcards to two other friends. Prior to this lawsuit, Forsythe received only four or five unsolicited calls inquiring about his work. The "Food Chain Barbie" series earned Forsythe total gross income of $3,659.3

Forsythe also produced 1,000 business cards which depicted "Champagne Barbie." His name and self-given title "Artsurdist" were written on the card. He used these cards at fairs and as introductions to gallery owners.

Finally, Forsythe had a website on which he depicted low resolution pictures of his photographs. The website was not configured for online purchasing. "Tom Forsythe's Artsurdist Statement," in which he described his intent to critique and ridicule Barbie, was featured on his website. His website also contained a prominent link to his biography.

On August 23, 1999, Mattel filed this action in the United States District Court for the Central District of California (the "Los Angeles federal district court") against Forsythe, alleging that Forsythe's "Food Chain Barbie" series infringed Mattel's copyrights, trademarks, and trade dress. Forsythe filed a motion to dismiss Mattel's First Amended Complaint, which was granted with leave to amend. Mattel filed a Second Amended Complaint, and Forsythe again moved for dismissal. The motion was granted in part; the court dismissed with prejudice Mattel's Eleventh Claim for federal trade libel.

On August 11, 2000, Mattel moved for a preliminary injunction. The district court denied the motion; we summarily affirmed. Mattel, Inc. v. Walking Mountain Prods., No. 00-56733, 4 Fed.Appx. 400, 2001 WL 133145(9th Cir. Feb.15, 2001) (unpublished).

During discovery, Forsythe served on Mattel the Federal Rule of Civil Procedure 26(a)(2)(B) expert witness report of Dr. Douglas Nickel, an expert on art history and curator of photography at the San Francisco Museum of Modern Art (the "SFMOMA"). Nickel's report focused on the traditions of twentieth century artists, in which Forsythe's works were properly understood.

On April 30, 2001, after receiving that report, Mattel subpoenaed Dr. Nickel to appear for a deposition and to produce certain documents. On or about May 15, 2001, Mattel served a Federal Rule of Civil Procedure 30(b)(6) subpoena on the SFMOMA (the "Subpoena" or "SFMOMA Subpoena"), a non-party to this action.4 The Subpoena demanded all documents relating to Forsythe and his works, all documents relating to Mattel or Barbie, and all documents relating to the SFMOMA's "policy or practice relating to the third-party copying, reproduction, or photographing" of works in which the SFMOMA had a proprietary interest. The Subpoena also demanded that the SFMOMA produce a witness or witnesses to testify at deposition on various topics including the following: licensing of artworks owned by SFMOMA, including licensed products, royalty rates, and the advertising markets, and sales channels for such products and "the number, identity, nature and results of lawsuits or other legal action taken ... or cease and desist letters sent by" the SFMOMA over the past five years related to reproduction of artwork owned by the SFMOMA. On May 24, 2001, the SFMOMA served written objections to the Subpoena on Mattel.

On May 30, 2001, Mattel filed an ex parte application in the United States District Court for the Northern District of California (the "San Francisco federal district court") to enforce the Subpoena and to compel the SFMOMA to produce documents and its representative(s) for a deposition. Mattel claimed that the Subpoena would aid discovery in Mattel's action against Forsythe. The SFMOMA opposed the ex parte application.

On June 4, 2001, the San Francisco federal district court denied the application, quashed the Subpoena, and held that it would award the SFMOMA's counsel fees and expenses incurred in opposing the application. The parties were unable to agree on fees, and the SFMOMA's counsel submitted an itemized statement of fees and costs. The court subsequently issued a written "Order Determining Amount of Attorney's Fees," denying the Application, quashing the Subpoena, and sanctioning Mattel.

On July 16, 2001, Forsythe moved for summary judgment in the Los Angeles federal district court. He also moved to exclude all or portions of the reports and testimony of Mattel's experts (Boles, Kinrich, Lynde, Marylander, and Schwartz) and a videotape of him destroying his Barbie collection.5 Mattel filed a cross-motion for summary judgment on some of Forsythe's affirmative defenses.

On August 22, 2001, the Los Angeles federal district court granted Forsythe's motion for summary judgment. The district court held that Forsythe's use of Mattel's copyrighted work was fair use. The court found that Forsythe's use of Mattel's trademark and trade dress caused no likelihood of confusion as to Mattel's sponsorship of Forsythe's works. The court dismissed Mattel's trademark dilution claim because it found that Forsythe's use had been "noncommercial." The court further found that Mattel's remaining state claims failed as a matter of law.

On Forsythe's motion to exclude the reports and testimony of Mattel's experts and to exclude Forsythe's videotape, the court excluded the report and testimony of Mattel expert Boles and Forsythe's "execution" videotape because they were irrelevant. The court, however, denied Forsythe's motion to exclude the reports and testimony of Mattel experts Marylander, Schwartz, and Kinrich. The court then denied Mattel's cross-motion for summary judgment on Forsythe's affirmative defenses as moot.

Mattel appeals the Los Angeles federal district court's grant of summary judgment in favor of Forsythe on the trademark, copyright, and state law claims. Mattel also appeals the Los Angeles federal district court's dismissal of its false advertising claim. Finally, Mattel appeals the San Francisco federal district court's order quashing the discovery subpoena that Mattel served on the SFMOMA and the court's order requiring Mattel to pay attorney's fees to the SFMOMA's counsel.

Forsythe cross-appeals the Los Angeles federal district court's order denying him attorney's fees and costs under the Copyright and Lanham Acts.

We first address the question whether the Los Angeles federal district court erred in granting Forsythe's motion for summary judgment on Mattel's claim of copyright infringement. We review de novo a grant of summary judgment. See Oliver v. Keller, 289 F.3d 623, 626 (9th Cir.2002). Viewing the evidence in light most favorable to the non-moving party, we must determine whether there are any genuine issues of material fact that remain for trial and whether the district court correctly applied the relevant substantive law. Id. We also review the district court's finding of fair use under the Copyright Act, a mixed question of law and fact, by the same de novo standard. Kelly v. Arriba Soft Corp., 336 F.3d 811, 817(9th Cir.2003).

The Copyright Act, 17 U.S.C. § 106, protects the owner of a copyright by granting him or her exclusive rights to "reproduce, distribute, and publicly display copies of the work." Kelly, 336 F.3d at 817 (distilling 17 U.S.C. § 106). A prima facie case of copyright infringement by reproduction is established by showing ownership by the plaintiff and copying by the defendant. Id. Mattel owns the copyright to the unadorned Superstar Barbie head6 and parts of the figure including revisions to the hands, feet, neck, shoulder and buttocks. Because Forsythe photographed the Barbie figure and reproduced those photographs, Mattel has established a prima facie case of copyright infringement.

Consistent with its policy goals, however, the Copyright Act recognizes certain statutory exceptions to protections on copyrights. At its core, the Act seeks to promote the progress of science and art by protecting artistic and scientific works while encouraging the development and evolution of new works. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575-76, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Recognizing that science and art generally rely on works that came before them and rarely spring forth in a vacuum, the Act limits the rights of a copyright owner regarding works that build upon, reinterpret, and reconceive existing works. See id. at 575-77, 114 S.Ct. 1164 ("[F]ew, if any, things ... are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow....") (quoting Emerson v. Davies, 8 F. Cas. 615, 619(C.C.D.Mass.1845) (No. 4,436)). The fair use exception excludes from copyright restrictions certain works, such as those that criticize and comment on another work. 17 U.S.C. § 107. See also Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1399 (9th Cir.) (holding that fair use "permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster"), cert. dismissed, 521 U.S. 1146, 118 S.Ct. 27, 138 L.Ed.2d 1057 (1997).

To determine whether a work constitutes fair use, we engage in a case-by-case analysis and a flexible balancing of relevant factors. Campbell, 510 U.S. at 577-78, 114 S.Ct. 1164. The factors are "to be explored, and the results weighed together, in light of the purposes of copyright." Id. at 578, 114 S.Ct. 1164. Depending on the particular facts, some factors may weigh more heavily than others. Id. at 577-79, 114 S.Ct. 1164. The four factors we consider are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Dr. Seuss, 109 F.3d at 1399-1404 (analyzing and applying 17 U.S.C. § 107).

The district court concluded that Forsythe's reproduction of Mattel's copyrighted Barbie was fair use. The district court reasoned that a trier of fact could only conclude that Forsythe's works were fair use because: (1) his use was parody meant to criticize Barbie, (2) he only copied what was necessary for his purpose, and (3) his photographs could not affect the market demand for Mattel's products or those of its licensees.

Where material facts are not in dispute, fair use is appropriately decided on summary judgment. Harper & Row, Inc. v. Nation Enters., 471 U.S. 539, 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). We recently noted "[a]s fair use is a mixed question of fact and law, so long as the record is `sufficient to evaluate each of the statutory factors,' we may reweigh on appeal the inferences to be drawn from that record." L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 942 (quoting Harper & Row, 471 U.S. at 560, 105 S.Ct. 2218), as amended, 313 F.3d 1093 (9th Cir.2002).

Because we agree with the district court that no triable issues of fact exist on whether Forsythe's use of Mattel's Barbie constitutes fair use, we weigh the four § 107 fair use factors on appeal. We conclude that Forsythe's use of Mattel's copyrighted Barbie constitutes fair use and affirm the district court's grant of summary judgment.

The "purpose and character of use" factor in the fair use inquiry asks "to what extent the new work is transformative" and does not simply "supplant[]" the original work and whether the work's purpose was for- or not-for-profit. Campbell, 510 U.S. at 579, 584, 114 S.Ct. 1164.

A work must add "something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Id. at 579, 114 S.Ct. 1164. The Supreme Court has recognized that parodic works, like other works that comment and criticize, are by their nature often sufficiently transformative to fit clearly under the fair use exception. Id. (recognizing that parody "has an obvious claim to transformative value"). In our circuit, a "parodist is permitted a fair use of a copyrighted work if it takes no more than is necessary to `recall' or `conjure up' the object of his parody." Dr. Seuss, 109 F.3d at 1400. A parodic work, however, like other potential fair uses, has to "work its way through the relevant factors, and be judged case by case, in light of the ends of copyright law." Campbell, 510 U.S. at 581, 114 S.Ct. 1164.

"[T]he threshold question[in the analysis of this first factor] ... is whether a parodic character may reasonably be perceived." Id. at 582, 114 S.Ct. 1164. See also Dr. Seuss, 109 F.3d at 1400. Mattel argues that the district court erred in finding parody because a reasonable jury could conclude that Forsythe's works do not parody Mattel's Barbie. In support of this argument, Mattel offered into evidence a survey in which they presented individuals from the general public in a shopping mall with color photocopies of Forsythe's photographs and asked them what meaning they perceived. Relying on this survey, Mattel asserts that only some individuals may perceive parodic character.

The issue of whether a work is a parody is a question of law, not a matter of public majority opinion. See Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164; Dr. Seuss, 109 F.3d at 1400-01 ("[U]nless the plaintiff's copyrighted work is at least in part the target of the defendant's satire, then the defendant's work is not a `parody' in the legal sense ...." (emphasis added)). Forsythe correctly points out that Mattel presents no case law in support of its contention that the parodic nature of a defendant's work should be assessed using surveys and opinion testimony. Forsythe is further correct that every court to address the issue whether a defendant's work qualifies as a parody has treated this question as one of law to be decided by the court. E.g., Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164; Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 114-15 (2d Cir.1998); Dr. Seuss, 109 F.3d at 1400-01.

We decline to consider Mattel's survey in assessing whether Forsythe's work can be reasonably perceived as a parody. Parody is an objectively defined rhetorical device. Further, because parody is "a form of social and literary criticism," it has "socially significant value as free speech under the First Amendment." Dr. Seuss, 109 F.3d at 1400. While individuals may disagree on the success or extent of a parody, parodic elements in a work will often justify fair use protection. See, e.g., Yankee Publ'g, Inc. v. News Am. Publ'g, Inc., 809 F.Supp. 267, 280 (S.D.N.Y.1992) ("First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed."). Use of surveys in assessing parody would allow majorities to determine the parodic nature of a work and possibly silence artistic creativity. Allowing majorities to determine whether a work is a parody would be greatly at odds with the purpose of the fair use exception and the Copyright Act. See generally Campbell, 510 U.S. at 583, 114 S.Ct. 1164.

A parody is a "literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule." Id. at 580, 114 S.Ct. 1164 (quoting AMERICAN HERITAGE DICTIONARY 1317 (3d.1992)). For the purposes of copyright law, a parodist may claim fair use where he or she uses some of the "elements of a prior author's composition to create a new one that, at least in part, comments on that author's works." Id. The original work need not be the sole subject of the parody; the parody "may loosely target an original" as long as the parody "reasonably could be perceived as commenting on the original or criticizing it, to some degree." Id. at 580-81, 583, 114 S.Ct. 1164. That a parody is in bad taste is not relevant to whether it constitutes fair use; "it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work]." Id. at 582-83, 114 S.Ct. 1164 (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460 (1903)).

In assessing whether Forsythe's photographs parody Barbie, Mattel urges us to ignore context — both the social context of Forsythe's work and the actual context in which Mattel's copyrighted works are placed in Forsythe's photographs. However, "[i]n parody, as in news reporting, context is everything." Id. at 588, 114 S.Ct. 1164 (citations omitted). We conclude that Forsythe's work may reasonably be perceived as a parody of Barbie.

Mattel, through impressive marketing, has established Barbie as "the ideal American woman" and a "symbol of American girlhood" for many. Mattel, Inc. v. MCA Records, Inc. ("MCA"), 296 F.3d 894, 898 (9th Cir.2002), cert. denied, 537 U.S. 1171, 123 S.Ct. 993, 154 L.Ed.2d 912 (2003). As abundantly evidenced in the record, Mattel's advertisements show these plastic dolls dressed in various outfits, leading glamorous lifestyles and engaged in exciting activities. To sell its product, Mattel uses associations of beauty, wealth, and glamour.

Forsythe turns this image on its head, so to speak, by displaying carefully positioned, nude, and sometimes frazzled looking Barbies in often ridiculous and apparently dangerous situations. His lighting, background, props, and camera angles all serve to create a context for Mattel's copyrighted work that transform Barbie's meaning. Forsythe presents the viewer with a different set of associations and a different context for this plastic figure. In some of Forsythe's photos, Barbie is about to be destroyed or harmed by domestic life in the form of kitchen appliances, yet continues displaying her well known smile, disturbingly oblivious to her predicament. As portrayed in some of Forsythe's photographs, the appliances are substantial and overwhelming, while Barbie looks defenseless. In other photographs, Forsythe conveys a sexualized perspective of Barbie by showing the nude doll in sexually suggestive contexts. It is not difficult to see the commentary that Forsythe intended or the harm that he perceived in Barbie's influence on gender roles and the position of women in society.

However one may feel about his message — whether he is wrong or right, whether his methods are powerful or banal — his photographs parody Barbie and everything Mattel's doll has come to signify. Undoubtedly, one could make similar statements through other means about society, gender roles, sexuality, and perhaps even social class. But Barbie, and all the associations she has acquired through Mattel's impressive marketing success, conveys these messages in a particular way that is ripe for social comment.7

Parody emerges from this "joinder of reference and ridicule." Campbell, 510 U.S. at 583, 114 S.Ct. 1164; cf. Dr. Seuss, 109 F.3d at 1401 (holding that defendants who wrote a poem titled "Cat NOT in the HAT" about the O.J. Simpson trial were not parodying Dr. Suess' original work because the stanzas had "no critical bearing on the substance or style of" the original). By developing and transforming associations with Mattel's Barbie doll, Forsythe has created the sort of social criticism and parodic speech protected by the First Amendment and promoted by the Copyright Act. We find that this factor weighs heavily in favor of Forsythe.

Another element of the first factor analysis is whether the work's "purpose" was commercial or had a non-profit aim. Campbell, 510 U.S. at 584, 114 S.Ct. 1164. Clearly, Forsythe had a commercial expectation and presumably hoped to find a market for his art. However, as the Supreme Court noted in Campbell, even works involving comment and criticism "are generally conducted for profit in this country." Id. (quoting Harper & Row, 471 U.S. at 592, 105 S.Ct. 2218.) On balance, Forsythe's commercial expectation does not weigh much against him. Given the extremely transformative nature and parodic quality of Forsythe's work, its commercial qualities become less important. Id. at 579, 105 S.Ct. 2218 (recognizing that the more "transformative the new work, the less will be the significance of the other factors").

The second factor in the fair use analysis "recognizes that creative works are `closer to the core of intended copyright protection' than informational and functional works." Dr. Seuss, 109 F.3d at 1402 (quoting Campbell, 510 U.S. at 586, 114 S.Ct. 1164). Mattel's copyrighted Barbie figure and face can fairly be said to be a creative work. However, the creativity of Mattel's copyrighted Barbie is typical of cases where there are infringing parodies. Campbell, 510 U.S. at 586, 114 S.Ct. 1164 ("[P]arodies almost invariably copy publicly known, expressive works."). As we have recognized in the past, "this [nature of the copyrighted work] factor typically has not been terribly significant in the overall fair use balancing." Dr. Seuss, 109 F.3d at 1402. In any event, it may weigh slightly against Forsythe.

C. Amount and substantiality of the portion used.

The third factor in the fair use analysis asks whether "`the amount and substantiality of the portion used in relation to the copyrighted work as a whole,' are reasonable in relation to the purpose of copying." Id. (quoting 17 U.S.C. § 107(3)). We assess the "persuasiveness of a parodist's justification for the particular copying done," recognizing that the "extent of permissible copying varies with the purpose and character of the use." Campbell, 510 U.S. at 586-87, 114 S.Ct. 1164.

Mattel argues that Forsythe used the entirety of its copyrighted work and that this factor weighs against him. Mattel contends that Forsythe could have used less of the Barbie figure by, for example, limiting his photos to the Barbie heads.

First, Forsythe did not simply copy the work "verbatim" with "little added or changed." Id. at 587-88, 114 S.Ct. 1164.8 A verbatim copy of Barbie would be an exact three dimensional reproduction of the doll. Forsythe did not display the entire Barbie head and body in his photographs. Parts of the Barbie figure are obscured or omitted depending on the angle at which the photos were