Tom Forsythe, who does business as "Walking Mountain Productions," produces photographs that have social and political overtones. Among Forsythe's works is a 78-photograph series titled "Food Chain Barbie." These photographs depict Mattel, Inc.'s famous "Barbie" doll in absurd positions and settings, many of which have sexual overtones. In some of the titles of individual photographs, Forsythe uses the "Barbie" name. Although the photographs vary in content, Forsythe generally depicts Barbie dolls juxtaposed with vintage kitchen appliances. For example, "Malted Barbie" features a nude Barbie placed on a malt machine. "Fondue a la Barbie" depicts Barbie heads in a fondue pot. "Barbie Enchiladas" shows a lit oven and a pan containing four tortilla-wrapped, salsa-covered Barbies.
In a declaration accompanying his summary judgment motion in the litigation described below, Forsythe described his photographic series as an attempt to "critique the objectification of women associated with Barbie, and to lambaste the conventional beauty myth and the societal acceptance of women as objects." He said he parodied Barbie because he regards Barbie as "the most enduring of those products that feed on the insecurities of our beauty and perfection-obsessed consumer culture." Forsythe also said he sought to communicate, through artistic expression, a serious message with an element of humor. Forsythe's market success was limited. He displayed his works at two art festivals and several exhibitions. He printed 2,000 promotional postcards depicting the "Barbie Enchiladas" photograph, but only 500 postcards were circulated. Forsythe also produced 1,000 business cards, which depicted "Champagne Barbie." His name and self-given title ("Artsurdist") appeared on the cards. In addition, Forsythe had a website on which he depicted low-resolution images of his photographs.
The website was not configured for online purchasing. "Tom Forsythe's Artsurdist Statement," in which he described his intent to critique and ridicule Barbie, was featured on the website. Prior to the lawsuit described below, Forsythe received only four or five unsolicited calls inquiring about his work. The "Food Chain Barbie" series earned him gross income of $3,659-at least half of which stemmed from purchases by Mattel investigators. Mattel sued Forsythe in federal district court, contending that the "Food Chain Barbie" series violated Mattel's copyright and trademark rights in regard to the Barbie doll's appearance and name. The district court granted Forsythe's motion for summary judgment. In so ruling, the court held that Forsythe's use of Mattel's copyrighted work was fair use and thus not copyright infringement. In addition, the court rejected Mattel's trademark infringement and dilution claims. Mattel appealed to the U.S. Court of Appeals for the Ninth Circuit. Was the district court's decision correct? How did the Ninth Circuit rule?