From an iconic toy, a mainstay for children around the world for decades, to an economic powerhouse in her own right, Barbie is undoubtedly an iconic pop culture figure. Created by Ruth Handler, the co-founder of Mattel Inc. (“Mattel“), after coming across Bild Lilli, a popular German novelty toy first created in 1952, while on a family vacation in Switzerland in 1956.1 Upon returning to the US, Handler created the first Barbara or ‘Barbie’ doll, arguably inspired by the Bild Lilli toy, and presented its first iteration at the 1959 American International Toy Fair in New York. The similarities between the two dolls eventually lead to an intellectual property infringement suit between the creators of the Bild Lilli doll and Mattel, where the creators of Bild Lilli argued that Mattel infringed upon its patent for doll hip joints, and later made an argument for copyright infringement. While the parties eventually settled the matter, with Mattel acquiring the copyright and patent rights to the Bild Lilli doll, few could have predicted the economic magnitude of the settlement for Mattel.
Spanning hundreds of iterations, the Barbie doll is no longer a homogenous, blond-haired, blue-eyed toy, but rather an evolving social phenomenon, adapting with the times and the markets Mattel expands into. With dolls of numerous ethnicities and body types, Barbie has also embraced inclusivity, catering to the plethora of different consumers across jurisdictions. A celebrity in her own right, Barbie herself has starred in 30 eponymous movies (some with their own spin offs), television shows, video games, comics and books. Now, with the July 2023 release of the much-awaited live action Barbie movie (“Film“), directed by Academy Award Nominee Greta Gerwig, we have experienced a pink summer, and there is little doubt that Barbie is back. Following an extensive marketing campaign, Mattel has capitalized on the Film’s release and engaged in a number of strategic partnerships with over a hundred brands including with OPI, NYX Cosmetics, Uno and Burger King (to name a few)2 through a number of licensing arrangements, granting the licensees certain limited rights to exploit Mattel’s intellectual property in the ‘Barbie’ brand name. The basis for the success of this strategy is undoubtedly in the strength that lies in the intellectual property rights associated with ‘Barbie’ and its distinctive brand identity. By capitalising on the sense of nostalgia Barbie evokes, Mattel and the Film’s marketing team has successfully implemented a branding strategy that has expanded Mattel’s interests beyond its usual market of toys geared towards a younger audience, transporting its older consumers back to a simpler time.
The key to an expansive marketing strategy is ensuring that the licensing arrangements in place are well-defined and clearly set out the roles, responsibilities and rights being granted to the third party seeking to use the intellectual property (“Licensee“). A licensing agreement provides the Licensee the right to use the intellectual property assets (“Licensed Intellectual Property“) of a party (“Licensor“) on mutually agreed terms. As a starting point, it is important to clearly define the Licensed Intellectual Property being licensed under the arrangement, which may even be annexed to the agreement. Another key feature of these agreements is limiting the ambit of the license, whether the right granted is revocable, transferrable, assignable, etc., and the term for which the right is being granted. An essential point of consideration is also whether the license granted will be exclusive or not, and an exclusive license would grant the Licensee the sole right to use or exploit the Licensed Intellectual Property for the purpose set out under the agreement. It is also important to define the territory of permissible use and where the Licensee is entitled to use the limited right granted under the licensing agreement.
The right to use the Licensed Intellectual Property is often given in exchange for some form of payment. This payment may be structured in a number of ways, the most common being either as a royalty payment or a lump sum fee. It is also essential to clearly set out that the rights granted to the Licensee under the arrangement are limited to what is expressly set out under the agreement, and that all other rights in the Licensed Intellectual Property will be retained by the Licensor and all benefits or goodwill generated by the Licensed Intellectual Property shall inure to the benefit of the Licensor only. As a Licensor, a key consideration would also be to set out certain license revocation events, upon the happening of which the limited right to use the Licensed Intellectual Property will be automatically rescinded by the Licensor. These may include using the Licensed Intellectual Property in any manner that is inconsistent with the terms of the license agreement.
Like Barbie was a trailblazer, having been to space before most women on Earth had the right to hold a credit card in their own name, the extensive marketing and branding strategy employed by Mattel and the makers of the Film may also serve as a sign of changing times. With news of Mattel and toy-manufacturing giant Hasbro developing movies around characters and games including Barney and Monopoly,3 we can say, with some certainty, that the approach to marketing campaigns, brand collaborations and licensing arrangements is undergoing a radical shift.