Barbie & Bratz: The Feud Continues

• Pages: 18-20

AUGUST 2011

18

Given the general verdict, the judge found that

it was unclear exactly which Bratz dolls were in-

fringing. Therefore, to determine equitable relief3,

he made his own nding that most of the dolls

infringed.

The District Court imposed a constructive trust –

an equitable remedy directing transfer of property

to the rightful owner – over all Bratz trademarks,

eectively handing over the entire business to

Mattel. The court also issued an injunction prohib-

iting MGA from marketing or producing not just

the four original dolls but all other Bratz dolls.

2010 Ninth Circuit

decision

MGA appealed to the United States Court of

Appeals for the Ninth Circuit, which on July 22,

2010, reversed the District Court decision, vacat-

ing the constructive trust and injunction.

Ideas for “Bratz” and “Jade”

In reaching its decision to vacate the constructive

trust, the Ninth Circuit discussed:

whether Mr. Bryant’s employment agreement

assigned his ideas for “Bratz” and “Jade” to Mattel;

and

if so, and Mattel was the rightful owner, whether

the constructive trust transferring MGA’s entire

trademark portfolio was too broad.

Mr. Bryant’s employment agreement with Mattel

stated:

“I agree to communicate to the Company as

promptly and fully as practicable all inventions con-

ceived or reduced to practice by me (alone or jointly

by others) at any time during my employment by the

Company. I hereby assign to the Company . . . all my

right, title and interest in such inventions, and all my

Background

In 2000, while he was still employed by Mattel

as a designer in the “Barbie Collectibles” depart-

ment, Carter Bryant pitched his idea for Bratz dolls

to MGA, providing some preliminary sketches and

a crude mock-up of a doll. MGA oered him a

consulting agreement and, on the day on which

he signed the agreement with MGA, Mr. Bryant

informed Mattel that he was going to resign. He

gave two weeks’ notice and set to work immedi-

ately to create a prototype Bratz doll for MGA. The

drawings used to pitch the Bratz idea were the

basis for the rst generation of Bratz dolls, named

Cloe, Yasmin, Sasha and Jade.

With the commercial success of Bratz, Mattel un-

covered Mr. Bryant’s involvement. This led to the

rst lawsuit in 2004, asserting Mr. Bryant’s viola-

tion of his employment agreement. Numerous

other claims and counterclaims were led, and

all issues concerning ownership of Bratz were

consolidated in the United States Federal District

Court for the Central District of California.

2004 District Court

decision

Mr. Bryant settled with Mattel before trial, but the

two companies continued their legal battle. The

rst phase of the case, decided in July 2008, dealt

with claims relating to the ownership of the Bratz

concept, and resulted in a victory for Mattel1. The

jury found that Mr. Bryant’s ideas for the names

“Bratz” and “Jade” as well as the preliminary sketch-

es and prototype were all generated within the

scope of his employment agreement with Mattel,

making Mattel the rightful owner of the dolls2. The

jury issued a general verdict (i.e., without specic

ndings) that MGA wrongfully acquired the ideas

and was liable for infringing Mattel’s copyright. It

awarded Mattel US$100 million.

BARBIE AND

BRATZ: THE FEUD

CONTINUES

Since 1959, Barbie has been the queen of the fashion-doll market. She even has close to two million friends

on Facebook. However, in 2001, Bratz fashion-dolls entered the market, and their funky, trendy attitudes

led them to quick success. Within five years Barbie had a formidable competitor in Bratz dolls (“The Girls

with a Passion for Fashion!”) which had captured about 40 percent of the market. Barbie manufacturer

Mattel responded by suing MGA Entertainment (creator of Bratz), and the two California-based compa-

nies have been locked in battle ever since. The reason? An employment agreement that was ambiguous

about intellectual property (IP) rights.

1. Mattel, Inc. v. MGA

Entm’t, Inc., 2010 U.S.

App. LEXIS 24150 (9th

Cir. Cal. Oct. 21, 2010)

2. For simplicity, only the

most relevant parties

and issues will be

discussed.

3. Equitable relief

involves the granting

of nonmonetary

judicial remedies

where available legal

remedies, such as

monetary damages,

cannot suciently

repair the injury.