Barbie in the ‘Real World’ of Expiring 'Luxury' Intellectual Property

For lawyers familiar with intellectual property, 'Barbie' represents the most fiercely guarded and fought over IP of the last few decades.
AK & Partners - Kritika Krishnamurthy
AK & Partners - Kritika Krishnamurthy

Although for most people, the word Barbie brings to mind the word 'pink', for lawyers familiar with intellectual property, she represents the most fiercely guarded and fought over intellectual property ('IP') of the last few decades. For example, Mattel Inc., the owner of the IP, has sued Nikkie Minaj and Aqua- makers of the famous song 'I am a Barbie Girl' and later bought the rights to the music, which now features in this much talked about pink feature. Now, Mattel, interestingly, is the producer of Greta Gerwig's movie. Many people do not know that because the film is said to be 'serious', which is not a word Mattel wanted attributed to Barbie until today.

But Barbie is part of a metaverse (pun intended) of lapsing famous copyrights, which are now free for public use leading to exciting results for consumers and complex brand issues for copyright owners. 'Winnie-the-Pooh', the hyphenated version, entered the public domain on January 1, 2022, after the copyright to AA Milne's 1926 book expired. Soon after, an adaptation of the character was announced; 'Winnie-the-Pooh: Blood and Honey', a movie portraying Winnie-the-Pooh and the seemingly gullible Piglet out on a murder rampage. Similarly, the original version of Mickey Mouse from Steamboat Willie will be opened for fair use by virtually anyone from January 2024 onwards.

In the Indian context, it brings to light the importance of investing in the registration of wordmarks, trademarks and copyrights seriously. Even if you are a startup, and then knowing when your registration is expiring and apply for renewal at least six months before the registration expires since the Indian intellectual property registration is still slower than other registration processes in India.

The most famous example is the milkshake Keventers which became prominent in New Delhi. Most people did not know that the persons selling it for many years were only stockists and not intellectual property owners of the brand. After a lengthy legal battle that lasted around three decades, the brand's owners succeeded in restoring their rights. Still, they were shocked to find that people had, in the last 30 years, become so familiar with the modified taste that they were rejecting the original milkshake recipes. Similarly, the Delhi High Court had to restrain 24 food entities from using the moniker 'Khan Chacha', a registered trademark of Gupta and Gupta Private Limited, since 1972. Furthermore, in a recent development, the Delhi High Court in Sholay Media Entertainment and Anr. v. Yogesh Patel and Ors., held that the defendant was liable for trademark infringement on account of unauthorised use of the title of the classic movie 'Sholay' as it is well-protected under IPR due to its 'acquired distinctiveness' resulting from its extensive popularity independent of the literal meaning of the term.

Is Intellectual Property Right Protection a Luxury?

As works protected under copyrights enter the public domain, such as the original version of Mickey Mouse from Steamboat Willie in January 2024, they are opened for fair use by virtually anyone. Their use or misuse is again highlighting the importance of protection a brand gets when intellectual property is registered and protected. For years, using hand sanitiser was considered a luxury. Since 2020, hand sanitisers have become a common household commodity; although there are no statistics, they have saved lives. Barbie, Winnie the Pooh and Mickey have become monikers for why to register and protect your intellectual property in the 'real world' of expiring billion-dollar IPs and threatened brand images.

Kritika Krishnamurthy is the Founding Partner of AK & Partners.

Bar and Bench - Indian Legal news