IP Masterclass Part 1 : How Mattel capitalises on IP rights in Barbie

Barbie has done it again – unless you have been living under a rock, you may have felt like you have been living in a Barbie world.

The cinemas are bursting and the famous doll is on front pages of the newspapers, all thanks to the Barbie film starring Margot Robbie and Ryan Gosling (aka “just Ken”) which premiered last Friday.

The Barbiemania is no accident, but a well thought-out and planned strategy of Mattel, owner of the Barbie intellectual property (“IP”) rights. Mattel’s strategy focuses on the company becoming recognised as an ‘IP-Driven Toy Company’.

In the run up to the release of the Barbie film, Mattel invested heavily in its marketing campaign – from renaming London tube stations to Barbie Xbox controllers, and even a pink Barbie DreamHouse in Malibu, which superfans could rent on Airbnb.

Mattel’s new IP strategy would appear to have already paid off, with Barbie setting a new record last weekend in the box office. With a brilliant $155million opening, Barbie has also recorded the biggest-ever debut for a film by a female director.

Barbie makes for a fascinating case study not only as a sociological phenomenon, but also from a legal perspective, for there are a lot of IP rights in Barbie. In this article, we will explore ways in which Mattel protect, enforce and exploit their IP rights related to the famous doll.

Mattel’s IP rights related to Barbie

Patents

The first Barbie-related patent, US3009284A, was filed in the United States in 1959 and granted in 1961, and it related to the construction of the doll construction (irrespective of its facial features or other aesthetic characteristics).

Other patents were subsequently filed covering, for example, angularly adjustable limbs – US3277601A.

Trade Mark

The colour often referred to as “Barbie pink” has been splashed over advertising boards, taxis and cities across the world this year ahead of the film release. Its use in the film to construct Barbieland and lifesize versions of the doll’s Dreamhouse ‘required so much pink paint it contributed to a worldwide shortage’ according to the film’s production designer.

Mattel is the registered trade mark owner of the so-called “Barbie pink” in the US, with the exact shade officially being Pantone 219C. It is protected in relation to goods and services in more than 100 categories, from bubble bath to cereal.

In addition to the colour pink, there are 23 registered EU trade marks protecting Barbie’s brand name and variations of the logo. These include everything, from Barbie’s side profile (004250338), to the word used to describe a fashion trend inspired by Barbie, ‘Barbiecore’ (018769712).

Designs

The Barbie girl doll is undeniably recognisable in its appearance, and it will come as no surprise that Mattel owns a number of registered designs.

Several designs are registered in the UK, covering the look of the various facial and other bodily characteristics of Barbie (90000604390002) and Ken (90000604390013), thereby ensuring that other toy manufacturers could not make or sell dolls that looked like them.

Mattel also registered designs protecting the appearance of the packaging Barbie dolls are sold in and the accessories which can be bought with Barbie, such as her clothes, cars, and houses.

Copyright

Out of all IP rights, copyright is the dominant one that can be found in every aspect of Mattel’s doll design and marketing process, as well as in the film.

This summer’s Barbie film has layers of copyright throughout, from the literary copyright within the film script all the way to the final cut footage. The sound recordings of actors Margot Robbie and Ryan Gosling will be subject to copyright, as will the film’s music soundtrack produced by Mark Ronson which features the likes of Dua Lipa and Nicki Minaj.

Copyright also covers the drawings of the new designs of Barbie dolls and accessories. The world of Barbie is effectively, built on copyright.

Exploitation of IP Rights

Over time, a business becomes more established and known amongst the consumer base and competitors and develops what is known as ‘goodwill’. Goodwill is a value that benefits a business through its brand, customer base and reputation associated with its IP rights. It’s considered to be “the attractive force which brings in custom”, and with goodwill comes the ability for a business to make profit from its IP assets.

Unlike the products they protect, IP assets cannot be seen or touched. Therefore, sometimes, it can be difficult for businesses to clearly identify and distinguish them and to appreciate their true value and commercial opportunities related to them.

As with other forms of property, an IP rights owner can buy, sell and license their IP.

Licensing is one of the most common ways a business chooses to profit from its IP assets. A licence is an agreement between the IP right owner and another party. In simplest terms, it grants the other party the owner’s permission to do something that would otherwise be an infringement of their IP rights, in exchange for a fee or a royalty. A licence can also include a variety of restrictions which can relate to, amongst other, exclusivity, time and territory.

Ynon Kreiz, former CEO of Disney’s Maker Studios, was appointed as CEO of Mattel in 2018. Since his appointment, Kreiz has been determined to turn Mattel into an ‘IP-Driven Toy Company’. A huge part of this IP strategy comes from leveraging their IP rights through licensing deals.

During a recent call with investors and analysts, Kreiz said, “We are making progress on capturing the full value of our IP in highly accredited business verticals, including content, consumer products, and digital experiences.”

The progress Mattel has made in capitalising on their IP assets has become clear over the past few months. In the run up to the Barbie film release, Mattel has signed licensing deals with over 100 brands.

Through the deals they have signed, they have enabled the consumer to become a part of the brand. You can now dress in Barbie apparel from Primark or Gap, wear her shoes from Aldo or skates from Skatehut and use her NYX Cosmetics makeup. You can even relax on a Barbie x Funboy pool float in her Airbnb Dreamhouse, while enjoying Pinkberry’s Barbie-branded frozen yoghurt.

There are countless benefits to IP licensing, including:

• Sharing risk – where the IP owner (licensor) provides another party (licensee) permission to manufacture and sell products, it receives revenues from the sales but transfers the risk and burden of promoting or selling the product to the licensee.
• Increasing revenue generation – Licensors can commercialise the IP themselves, and also raise income from the licensee can promote and sell on their behalf, and at their own expense. All whilst retaining ultimate ownership of the IP.
• Reducing costs – A business may ‘buy-in’ innovation to reduce its research and development costs.
• Saving time – A business can often get its products or services to market more efficiently by acquiring a license to use existing IP, instead of re-inventing the wheel (sometimes referred to as an ‘engineering workaround’).
• Accessing expertise – By taking a licence, a licensee may be able to gain access to expertise that it does not have in-house.
• Increasing market penetration – IP owners can license their products to another business to trade in territories that the IP owner cannot cover, thereby accessing new markets and making use of that businesses’ customer base.
• Competitive advantage – In obtaining a license to use IP, and in particular an exclusive licence, a licensee may obtain an advantage over its competitors by way of acquiring the benefits listed above.

Mattel is clearly aware of these benefits, and the Barbie film is a great example of that. In addition to the film, Mattel has already been making plans for a ‘Mattel Universe’ style entertainment venture. According to a New Yorker report, the company has plans to raid its toy box with 45 films already in development based on their huge catalogue of toy brands.

Summary

Mattel has a long-established reputation in terms of protection and enforcement of its IP rights. We will cover Mattel’s enforcement efforts in Part 2 of our Barbie IP Masterclass. However, its latest move towards exploitation of IP rights and becoming an IP-Driven Toy Company could mark a new era for the business.

The Barbie film has the potential to kickstart Mattel’s journey which will see it follow in the footsteps of the likes of Disney and Marvel in becoming an entertainment powerhouse.

Mattel’s marketing masterclass has transported us to a Barbie world and shown that, in the words of Robbie Brenner who heads up Mattel Films, “In the world we’re living in, IP is king.”

Read our IP Masterclass Part 2: How Mattel enforces IP rights in Barbie and beyond.. where we explore how Mattel enforces their IP rights and how, on occasion, it has found itself on the other side of an infringement action.

Can we help?

If you would like to find out how your business can protect, enforce, and exploit its intellectual property rights, please do not hesitate to get in touch with one of our experienced intellectual property lawyers.