By Afshaan Jiwaji And Claire Stempien

The information provided is for educational purposes only. The information contained represents the views and opinions of the authors and not their respective law firms or the CBABC.

Barbie came from humble beginnings, but thanks to her visionary creator she has reinvented herself into a cultural icon. Her influence has spurred the recent pink trend seen on social media and in stores described as “Barbiecore”. Ruth Handler, the creator of Barbie and co-founder of the juggernaut Mattel Inc., was inspired by the German “Bild Lilli” doll when she created Barbie in 1959. She subsequently purchased the copyright and patent rights to the Lilli doll in 1964 for the equivalent of approximately $207,081 U.S. dollars.ⁱ Undoubtedly a meager sum in comparison to the $1.49 billion in annual gross billings that Barbie would see in 2022 alone.ⁱⁱ Not one to rest on her laurels, this year Barbie wrote, produced, and acted (allegedly) in her record-breaking $1.34 billion-dollarⁱⁱⁱ box office film. But Barbie’s success, and by extension that of Mattel, is intrinsically linked to its IP strategy.

Mattel’s transition from a toy-manufacturing company, making items, to an intellectual property company, managing franchises, is in large part the brainchild of current CEO, Ynon Kreiz.^iv When Kreiz took up the position in 2018, he immediately began working towards shifting the company’s focus from selling toys to selling stories. He hired Robbie Brenner to identify company owned intellectual property that could be used in Mattel’s newly created film division.^v The fervor surrounding the Barbie movie is a testament to the success of this strategy. As Brenner told the New Yorker, “In the world we’re living in, IP is king.”^vi

Mattel is persistent in monitoring threats to its intellectual property rights and is no stranger to the courtroom. In one of Canada’s most famous trademark cases, Mattel took a Montreal restaurant operating under the name “Barbie’s” all the way to the Supreme Court of Canada.^vii In the United States, Mattel has litigated over artists using Barbie dolls in their artwork^viii, websites using the Barbie font^ix, and entertainers using Barbie in their name and website URL.^x Most famously, Mattel sued Aqua for their song “Barbie Girl”; a song which Mattel later licensed.^xi

In the process of curating its enviable intellectual property portfolio, Mattel has taken advantage of the diverse forms of intellectual property protection available globally, significantly bolstering the value of the Barbie brand in the process. Examples of such forms of protection within Canada’s intellectual property regime include, but are not limited to:

Copyright

Copyright confers the exclusive right to produce or reproduce works.^xii We owe copyright for protecting hits such as the Barbie movie and the soundtrack to the movie, featuring original music from artists such as Lizzo, Dua Lipa, and Nicki Minaj & Ice Spice’s remake of the iconic “Barbie Girl” song, featuring none other than Aqua, of course.^xiii

Patents

Patents confer the exclusive right to an invention.^xiv For example, this expired Canadian patent No. 2372913 for “Doll Having Realistic Twisting Midriff” owned by Mattel, Inc. Articulating joints are truly essential for all of Barbies various outfit changes!

Industrial Designs

Industrial designs protect features of shape, configuration, pattern or ornamental and any combination of those features that, in a finished article, appeal to and are judged solely by the eye. This expired Canadian industrial design No. 94884 owned by Mattel is for the visual features of the entirety of the doll shown in the photograph on the left.

Trademarks

Trademarks protect recognizable signs that distinguish the source of goods or services from that of others. Such as trademark registration TMA970916 for the Barbie logo for use in association with dolls, doll clothing and doll accessories and TMA639325 for the Barbie word mark in association with a truly astounding plethora of products.

Conclusion

Business owners can take a page out of Barbie’s book by engaging intellectual property professionals to help develop, reevaluate, and protect intellectual property assets. In particular, an intellectual property professional can assist with an intellectual property audit of a business, identify IP assets, and help you take steps to strengthen, leverage and protect those assets. Such measures can help ensure the success and longevity of your business. As Ruth Handler sagely tells Barbie in the Barbie movie: “Humans have endings. Ideas live forever.”

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1. Gosia Evans, “IP Masterclass Part 2: How Mattel Enforces IP Rights in Barbie and Beyond” (8 July 2023), online: Geldards | ↩
2. Aislinn Murphy, “Mattel’s Barbie Earns Over a Billion Every Year” (20 July 2023), online: Fox Business | ↩
3. Dyah Larasati, “’Barbie’ Budget Breakdown: How the Greta Gerwig Film Became the Biggest of the Year” (6 August 2023), online: Collider | ↩
4. See Alex Barasch, “After ‘Barbie,’ Mattel is Raiding its Entire Toybox” (2 July 2023), online: The New Yorker | ↩
5. Ibid.| ↩
6. Ibid.| ↩
7. See Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 | ↩
8. See Mattel, Inc v Walking Mountain Productions, 353 F (3d) 792 (9th Circuit 2003); Mattel Inc v Pitt, 229 F Supp (2d) 315 (SNDY 2002). | ↩
9. See Mattel Inc v JCom Inc, 97 Civ 7191 (SS) (SDNY 1998) | ↩
10. See Mattel, Inc. v. Global China Networks, LLC, No. 07 Civ 7418 (SDNY 2007), 2007 WL 2509011 | ↩
11. See Mattel Inc v MCA Records Inc, No 98-56453, 98-56577 (USCA 9th Circuit 2002) | ↩
12. See Copyright Act, R.S.C. 1985, c. C-42, s. 3 | ↩
13. Barbie The Album | ↩
14. Patent Act, R.S.C. 1985, c. P-4, s. 2 | ↩