On April 26, 2004, the Court heard Defendant Thomas Forsythe dba Walking Mountain Productions' motion for attorney's fees and expenses
A. Attorney's Fees and Costs for Copyright Claims
Under the Copyright Act, a district court may exercise its discretion to "award a reasonable attorney's fee to the prevailing party as part of costs." "Courts may look to the nonexclusive Lieb factors as guides and may apply them so long as they are consistent with the purposes of the Copyright Act and are applied evenly to prevailing plaintiffs and defendants." The Lieb factors include "[f]rivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence."
[The court found that Forsythe's defense of the action furthered the purposes of the Copyright Act because it was meritorious, demarcated more clearly the boundaries of copyright law, and publicized his work, possibly leading to further creative pieces. His work was clearly parody under copyright principles, and satisfied the four prongs of the fair use test. Mattel's copyright claims were objectively unreasonable and had little likelihood of success, and were therefore frivolous. The court concluded that Mattel sued to force Forsythe 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.]
B. Attorney's Fees for Lanham Act Claims
Defendant also requests fees for his defense of Plaintiff's three claims under the Lanham Act: trademark, trade dress, and dilution. But the Lanham Act only allows for an award of attorney's fees in "exceptional cases." Cases are exceptional when a plaintiff has brought a case that is "groundless, unreasonable, vexatious, or pursued in bad faith."
1. Trademark Claim
A trademark claim exists under the Lanham Act " 'where the public interest in avoiding consumer confusions outweighs the public interest in free expression.' " There was little risk of consumer confusion from Defendant's work. Defendant's parodic intent was clear. The titles of the photographs "do not explicitly mislead." Defendant's use of the "Barbie mark is clearly relevant to his work." Plaintiff's claim, therefore, is groundless and unreasonable such that Defendant should receive attorney's fees for its defense.
2. Trade Dress Claim
Nominative fair use of trade dress is not a violation of the Lanham Act if (1) " 'the plaintiff's product or service in question [is] one not readily identifiable without the use of the trademark;'" (2) " 'only so much of the mark or marks [is] used as is reasonably necessary to identify the plaintiff's product or service;' " and (3) " 'the user [does] nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.' "
Defendant's use "easily satisfies the first element for nominative fair use." "[H]is use of the Barbie figure and head are reasonably necessary in order to conjure up the Barbie product in a photographic medium." Additionally, "[i]t would have been extremely difficult for [Defendant] Forsythe to create a photographic parody of Barbie without actually using the doll." As to the second element, "[i]t would be very difficult for [Defendant] to represent and describe his photographic parodies of Barbie without using the Barbie likeness." Finally, Defendant "used only so much as was necessary to make his parodic use of Barbie readily identifiable, and it is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated with his work." Thus, Plaintiff's trade dress claim was groundless and unreasonable.
3. Dilution Claim
Because of the free speech protections of the First Amendment, a trademark is not diluted through tarnishment by editorial or artistic parody that satirizes plaintiff's product or its image. A dilution action only applies to purely commercial speech. Parody that does more than propose a commercial transaction is noncommercial speech. Defendant's parody does more than propose a commercial transaction not only because many would classify his work as humorous, but also because his work provides a visual commentary on a cultural icon--Barbie. Thus, Defendant's work is noncommercial speech and it was exceptional for Mattel, a sophisticated plaintiff, to bring this groundless and unreasonable dilution claim.
C. Reasonableness of Requested Attorney's Fees and Costs
The fees and costs Defendant requests are reasonable. The motion includes adequate records and support for the fees and costs requested. At the hearing on the motion, Defendant's attorney stated that he did not spend the anticipated $200 for a hotel stay. This Court, therefore, GRANTS Defendant $1,584,089 in attorney's fees and $241,797.09 in costs.
Prepared by Jefferson Scher for Law 227: Trademarks & Unfair Competition, Summer 2005. Substantial portions of the original opinion have been omitted.