In a recent interview with LexisNexis Kelly Saliger discussed the layers of IP involved in the creation and commercialisation of Barbie. From copyright options to leverage in commercial negotiations – what’s worked well? The article also considers collaborations and merchandising, basic contract terms including exclusivity and territory, the use of social media during promotion and how close is too close for social commentary and parody?
What does the Barbie film mean for IP rights?
‘Barbie’ is one of the most publicised films of the summer. What IP issues are involved in making a film that is based on a well-known product like the Barbie doll?
We will circle back to trade mark protection and the more obvious types of IP, but the starting point for a production like Barbie would have been a killer script. A film like Barbie will have layers and layers of IP running through it from the screenplay through to the music script.
While it has been well-publicised that the film was directed by Greta Gerwig, we have seen less about her partner and co-writer Noah Baumbach. No doubt there will be a complex contractual agreement (or series of agreements) in place around ownership and creation of the screenplay and its related copyright.
Copyright protection will also protect the ongoing right to use the screenplay or any other types of copyright produced during the filming, often protected contractually by future facing copyright ‘options’.
As a writer you will want to think about the options you are giving away and those you are keeping back (if any) for yourself.
What if ultimately Barbie becomes a West End show? Who has the rights to produce that?
Sometimes the options come down to the leverage you have as a writer (Greta Gerwig being a known industry name with a great track record) and who you are negotiating with. In this case—Mattel Films and perhaps the production companies LuckyChap Entertainment and Heyday Films, who were co-producing.
What other IP is at play with something as iconic as Barbie?
Distribution deals and merchandising collaborations (discussed further below) most definitely, perhaps product placement and advertising issues, and the more basic protection that Mattel will have in place in terms of designs and trade marks.
Trade marks that do not just cover the word ‘Barbie’ but a specific Pantone shade (for which they have a US registration) or a design that protects the shape of the Barbie doll head, the latter being litigated in the UK back in 2014 before the High Court. 3D trade marks are hot in the UK right now, so let’s watch this space to see whether a 3D Barbie appears on the UK trade mark register in due course.
What IP arrangements need to be put in place to sell merchandise in association with a film like this?
Unless you have been living under a rock you cannot have missed the many, many collaborations with Barbie in summer 2023.
Over 100 collaborations including nail polish (O.P.I), hairdryers (PerySmith) and clothing (GAP, Zara) all the way through to a scented Dreamhouse candle (Homesick) and a Hasbro tie-up creating a Barbie Monopoly!
Merchandising and collaborations are a key revenue stream alongside any film or TV production and have produced great tie-ups in the past.
As a child of the 80s,Teenage Mutant Ninja Turtles was a hit, and now some 30 years later it’s having a renaissance and teaming up with Pizza Hut in summer 2023. Other successful collaborations you might recall include Lego x Harry Potter, H&M x Disney, and Stella x Taylor Swift.
From luxury to budget, what has Mattel done well and what due diligence might they have done before entering into their collaborations?
The first thing to note is that they do not seem to have gone down the exclusive licence route, certainly not in the fashion space. From Zara to Gap and Boohoo and PacSun they have worked with retailers in producing various fashion lines. This means that their licences, at least for clothing, are not exclusive.
Whether a licence for merchandising is exclusive or not is often one of the most contentious points of contract negotiation. Are you the only brand in your industry that gets to say it has a tie up with Barbie? It is a big ask and probably one with a £ sign attached to it.
For a brand like Mattel, it is potentially beneficial to have as many licences in place as possible to secure the greatest revenue.
But equally, for a more unique product like a candle, where the demand might be smaller (how many candles does one person need?), you would want exclusivity to feel the benefit of the collaboration.
The other important point in a contract for merchandising will be territory. Does Zara have the right to produce merchandise worldwide? Or just in the UK? How does that impact on any licence fee or royalties that might be payable? Again, a big brand like Zara might have more leverage than a smaller brand, and leverage is everything in negotiation. Someone, somewhere in the Mattel legal team has been kept busy!
Other due diligence considerations, which work both ways, come down to the type of brand you’re collaborating with. Do they have the same ethical and moral judgment as your company? Are they offering sustainable or environmentally friendly products? What best practice do they have in place around their manufacturing and employees to avoid issues around modern slavery?
How can brand owners use social media to encourage engagement with their brands?
We all know the strength of social media. It seems there is no such thing a bad publicity. Remember Colin the Caterpillar and Aldi & M&S going at it on Twitter? Both brands were getting traction as a result of their social media play.
When there is a film and franchise attached to it, there are usually social media clauses built into the actor’s contracts. Some posts relating to the film are likely to be organic, but others dictated by the contract. The number of posts they need to make, whether the actor has a specific tie-up with a collaborating brand or just using the #ad when they are getting a freebie.
Barbie has outdone itself on this one. They have used the iconic Barbie packaging and created full sized Barbie boxes dotted around various cinema locations so that everyone can take part. Social media success—tick one.
Scenes from the movie have also taken over Instagram—Margot Robbie slipping her feet out of her heels but maintaining her perfect arch which celebs including Chrissy Teigen have attempted to recreate with hilarious results, second tick.
Third tick—creating something for the TikTokers to recreate,the ultimate dance routine. See Ashley Tisdale of Disney fame recreating the scene and ‘Barbie World Dance Trend’ having over 4.1 billion views on the platform.
What practical tips should IP lawyers be giving to their clients in relation to exploiting their IP rights in innovative ways?
If your business is already known it is likely that those wanting to collaborate will come to you. Mattel has a link on its main webpage for submissions.
But what if your business is still growing? How can you find those willing to collaborate? Or can you find a way to jump on the bandwagon without infringing others IP rights? What about if you just use pink? Or say something funny to draw a parody?
Parody or making reference to something outside of a formal collaboration is always a fine line. In another throw-back to the 90s, many might remember Aqua’s song ‘Barbie Girl’. Aqua’s position all along was that the song was a social commentary. Mattel’s position was that the lyrics (including ‘kiss me here, touch me there, hanky-panky’) were damaging Barbie’s image and diluting its brand. The case also alleged infringement of the colour pink and mimicry of the Dreamhouse. The song resulted in full-on US litigation and, while the song itself was ultimately ruled as a parody (and therefore did not infringe the Barbie’s IP rights), it cost both parties a lot of money, time and effort.
If you are not one of the formal collaborators, there is still space for you to get involved. Oppenheimer is the other big movie of the summer and home-grown Margate skincare brand Haeckels has had their products used and mentioned throughout the press tour.
And what about when collaborations go wrong? Be sure to include terms in your contract that allow you to terminate. Think back to the Justin Bieber collaboration with H&M—if you’re aligning yourself with clothing or merchandise do you want final sign-off on any product runs? What damages might you want to be given if something does go wrong? What about the companies you’re working with? Do their ethics, morals, environmental responsibility or sustainability claims align with yours?
Is there anything Barbie can’t do? No seems to be the answer…except the Barbie doll being able to stand in heels by herself.
Interviewed by Vinothini Samugamnathan and first published by Lexis Nexis on 11 August 2023.