Christian v. Mattel, Inc.

Facts

Mattel (D) is a toy company that is perhaps best recognized as the manufacturer of the world-famous Barbie doll. Since Barbie's creation in 1959, D has outfitted her in fashions and accessories that have evolved over time. D has sought to protect its intellectual property by registering various Barbie-related copyrights, including copyrights protecting the doll's head sculpture. D has vigorously litigated against putative infringers. In 1990, Claudene Christian than an undergraduate student at the University of Southern California ('USC'), decided to create and market a collegiate cheerleader doll. The doll, which the parties refer to throughout their papers as 'Claudene,' had blonde hair and blue eyes and was outfitted to resemble a USC cheerleader. D soon learned about the Claudene doll. After concluding that it infringed certain Barbie copyrights, D brought an administrative action before the United States Customs Service in 1996 in which it alleged that the Claudene doll, manufactured abroad, had pirated the head sculpture of the 'Teen Talk' and 'SuperStar' Barbies. The Customs Service ruled in Claudene's favor and subsequently released a shipment of Claudene dolls. D then commenced a federal court action in 1997 in which it once again alleged that Claudene infringed various of D's copyrights. Claudene retained Hicks as its counsel. After the court dismissed Claudene's multiple counterclaims, the case was settled. D released Claudene from any copyright infringement liability in exchange for, among other things, a stipulation that D was free to challenge Claudene's alleged copyright of the Claudene doll should Claudene 'or any successor in interest' challenge D's right to market its Barbie dolls. CDC, Claudene’s company, was owned by Claudene and Harry. Claudene was Harry’s daughter. 

Part Two:

Seizing on a loophole in the parties' settlement agreement, within weeks of the agreement, Harry Christian (P), who was not a signatory to the agreement, retained Hicks as his counsel and filed a federal court action against Mattel. In the complaint, which Hicks signed, P alleged that Mattel obtained a copy of the copyrighted Claudene doll in 1996, the year of its creation, and then infringed its overall appearance, including its face paint, by developing a new Barbie line called 'Cool Blue' that was substantially similar to Claudene. P sought damages in the amount of $2.4 billion and various forms of injunctive relief. In an apparent effort to demonstrate that the action was not a sham, Claudene Christian and CDC were also named as defendants. Subsequently, Hicks alleged in a letter to Mattel's counsel that an additional a frivolous complaint based on a legally meritless theory that Mattel's prior-created head sculptures infringed Claudene's 1997 copyright. Hicks declined to withdraw the complaint during the 21-day safe harbor period provided by Rule 11, and Mattel filed its motion. Hicks proceeded with the litigation and filed a motion pursuant to Federal Rule of Civil Procedure 56(f) to obtain additional discovery. In particular, he sought information regarding the face painting on certain Barbie dolls and the face paint/head sculpture combinations used by Mattel after 1996. The district court summarily denied the motion. It later noted, in the context of its summary judgment order, that 'it is unclear what [Christian] is requesting when he seeks access to post-1996 Barbies.' Hicks then began filing additional papers that were characterized by frequency and volume. Following official completion of the summary judgment briefing schedule, Hicks filed what was styled as a 'supplemental opposition. ' In those papers, Christian asserted for the first time that the head sculpture of Mattel's CEO Barbie (which was created in 1998) infringed Christian's copyright in the Claudene doll. He did not, however, move for leave to amend the complaint. Hicks later filed additional papers alleging that several additional Barbie dolls infringed the Claudene sculpture. As with CEO Barbie, no motion for leave to amend the complaint was filed. Then, following oral argument, Hicks filed a copy of a supplemental registration of Claudene that the United States Copyright Office had issued five days prior to the argument. The supplemental registration clarified that the nature of the original Claudene copyright 'was intended to be the sculpture and the painted face' and that the nature of authorship covered both two-dimensional artwork and three-dimensional sculpture.

Part Three:

The district court granted D's motions for summary judgment and Rule 11 sanctions. The court ruled that D did not infringe the 1997 Claudene copyright because it could not possibly have accessed the Claudene doll at the time it created the head sculptures of the Cool Blue (copyrighted in 1991) and Virginia Tech (copyrighted in 1976) Barbies. The court also rejected P's theory that the D dolls had infringed the totality of Claudene's appearance, including its face paint because the copyright is 'limited in scope and extends only to 3-dimensional sculptures and not 2-Dimensional artwork . . . .' Alternatively, the court found that D had been using lighter-colored face paint 'on dolls produced before the Claudene doll was created in 1996, such as Colonial Barbie (1994) and Pioneer Barbie (1995), ' and therefore could not have infringed the later-created Claudene doll even if the Claudene copyright protected two-dimensional artwork. Finally, the court found that D, as owner of various Barbie head sculpture copyrights, had 'the exclusive right to prepare derivative works of its own copyrighted works. Thus, D has the right to paint and re-paint its own copyrighted sculptures.' In adjudicating the summary judgment motion, the district court did not consider any of Christian's supplemental summary judgment filings. It noted that the papers not only 'exceeded the permissible page limits,' but also' failed to adhere to Local Rule 3.4.1,' which established various type font requirements. As for D's Rule 11 motion, the district court found that Hicks had 'filed a meritless claim against D. A reasonable investigation by Mr. Hicks would have revealed that there was no factual foundation for [P's] copyright claim.' Indeed, the district court noted that Hicks needed to do little more than examine 'the back of the heads of the Barbie dolls he claims were infringing,' because such a perfunctory inquiry would have revealed 'the pre-1996 copyright notices on the Cool Blue and [Virginia Tech] Barbie doll heads.' Additionally, the district court made other findings regarding Hicks' misconduct in litigating against D, all of which demonstrated that his conduct fell 'below the standards of attorneys practicing in the Central District of California.' (The casebook lists out the reasons given all of which do not correspond to papers filed before the court; this is important for the ruling of the case). The district court considered various arguments that Hicks had advanced in opposition to D's fee application as it would have a 'ruinous' effect on his finances and ability to practice law. The district court held, however, that 'repeated reprimands and sanctions' imposed in prior litigations 'clearly have not had the desired deterrent effect on his behavior,' and it concluded that Hicks would not be punished sufficiently if the court were to impose mere 'non-monetary sanctions.' The court also rejected D’s argument that if his motions were so frivolous, then the fees D incurred were extremely excessive as it would not have taken much effort to prevail in court. The Court grants D its attorneys' fees in the amount of $501,565.00.

Issues

Rule of Law

Holding and Decision

Legal Analysis

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