DOMAIN NAMES/CYBERSQUATTING/DILUTION

A series of cases found Mattel's trademark "BARBIE" famous, and that domain names containing derivatives barbiesplaypen.com, barbiesbeachwear.com and barbiesclothing.com diluted the mark.

Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q. 2d 1620. (S.D.N.Y. 2000)

Mattel Inc., v. Jacom, Inc., 48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998)

Mattel, Inc. v. Adventure Apparel, 2001 WL 1035140 (S.D.N.Y. 2001)

Mattel, Inc. v. Barbie-Club.com, 310F.3d 293 (2d Cir.2002) 

Mattel, Inc. v. Global China Networks, LLC, 2007 WL 3332662 (S.D.N.Y.,2007)

Odds & Ends:

Entm't v. KIDdesigns, Inc., 2005 U.S. Dist. LEXIS 44386

Mattel was sued as co-defendant alleging Mattel allowed a Barbie compilation CD to be released with knowledge that royalties were not being paid properly by another party.

Gunther-Wahl Productions, Inc. v. Mattel, Inc., 104 Cal.App.4th 27, 128 Cal.Rptr.2d 50 (Cal.App. 2 Dist., 2002.)

Plaintiff sued Mattel for breach of an implied-in-fact contract, alleging that toys were based on ideas he presented to Mattel. Plaintiff claimed that his Flutter Faeries ideas were “taken from him.” Gunther-Wahl claimed that ideas for various Mattel dolls, including Barbie and the Polly Pocket line, that followed his presentation to Mattel of Flutter Faeries in 1993 were similar to his concept for Flutter Faeries. The jury found for the Plaintiff. The court of appeals tossed the jury instructions, so the case was remanded.

This is not an exhaustive list of litigation involving the Barbie brand, but a fun look at selected cases. I have inserted links to either free case law or topical discussions on the cases when available. Special thanks to third year law student James “Mitch” Mitchell for his research assistance.