What Barbenheimer Can Teach Us About Intellectual Property

Barbenheimer is a new term for consecutively watching the movies “Barbie” and “Oppenheimer.”  In honor thereof, we present the Barbenheimer Legal Alert.

Barbie on Trademarks

Did you know Mattel sued, and lost, to stop the “Barbie Girl” song?

In 1997, the Danish band Aqua produced and released the song Barbie Girl without approval from Mattel. As the song gained in popularity, Mattel sued MCA Records, Universal Music International, and several other entities involved in distributing the song. The lawsuit claimed both trademark infringement and dilution.

On summary judgement, the claims were dismissed finding the song was a clear parody. The trial court also found the song was not likely to dilute the Barbie mark and not likely to confuse consumers that Mattel was affiliated with the song.

The Ninth Circuit Court of Appeals upheld the lower court’s decision. The Appeals court used the same Rogers test noted in the Jack Daniel’s Supreme Court decision. In essence, the Appeals Court found the song to be a clear parody, therefore the First Amendment superseded Mattel’s Federal Trademark rights.

By contrast, Warner Bros released the Barbie movie on July 20, 2023. Having learned from the Aqua song, Mattel has been front and center—not only licensing the Barbie marks but also controlling the quality of the use of the marks.

It has been well-documented that executives from Mattel were directly involved in the filming of the Barbie movie. Moreover, Mattel has joined forces with a larger number of licensing partners for developing branding opportunities.

Building upon the Jack Daniel’s decision, we continue to see strength and value in actively policing and managing your marks. While we are seeing some clarity on how third parties can use your marks, the strongest position is gained in being involved in the decision process at the time of creation and development.

Oppenheimer on Patents

Did you know while developing the Manhattan project, the U.S. Department of Energy filed thousands of patent applications with the U.S. Patent Office?

The U.S. Patent Office conducts an initial review of filed patent applications to determine if they are subject to national security or secrecy requirements. A patent application can be diverted to a secret examination division, preventing the application from public disclosure.

During the course of the Manhattan project, the subject of the movie Oppenheimer, the Department of Energy was actively filing patents with the U.S. Patent Office, covering numerous aspects of the technology behind building an atomic bomb. The patent filings were directed to a secret division located not in Washington D.C., but in Richmond Virginia[1].

Congress became aware of the patent filings during a February 1946 Congressional hearing. In that hearing, Captain Robert A. Lavender testified that the decision to seek patent protection was made to avoid other inventors filing speculative patents, potentially impeding the U.S. Government from using atomic technology.

Many of the filed patent applications were eventually granted. Technically, under the quid-pro-quo of U.S. Patent law, how to build an atomic bomb is now in the public domain. But when reviewing some of these patents, one finds them mundanely describing discrete elements of a highly complex system. For example, U.S. Patent No. 3,358,605 describes a Pressure Sensitive Switch and U.S. Patent No. 2,709,222 describes a Method and Apparatus for Separating Materials.

Thus, whether you are dealing with Barbie^® Pink clouds or an atomic bomb mushroom cloud, Intellectual Property concerns can and will be front and center. For more tips on protecting your trademarks, contact a member of the WRVB Intellectual Property practice. Enjoy the movies!

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[1] According to the Library of Congress, the secret files would have been held at a former tobacco warehouse located at 700 N. Lombardy Street, now the location of a U-Haul storage facility.