Disney’s Baby Yoda Takedown: Brand Protection or Just Bullying?
by George H. Pike
One of the first court decisions that students in my legal research class read involves a Utah artist who used Mattel’s Barbie dolls in a photographic series featuring the dolls in “absurd” and provocative poses (Mattel, Inc. v. Walking Mountain Productions). Mattel sued the artist for both copyright and trademark infringement, even though he had sold only a few thousand dollars’ worth of his photographs and postcards. The artist asserted that his work involving the dolls was meant to “critique … the conventional beauty myth” as personified by the Barbie doll. The artist raised fair use defenses to both the copyright and trademark claims based on his work as a parody of Barbie and was successful.
| Brands have value because of an association of the product with a certain provider based on consumer expectations of a certain quality.
I selected this case for my students not because of the substantive importance of the decision, but because it effectively illustrates the use of a specific court decision as a tool for researching other court decisions, legislative statutes, and other legal information. However, because my students are in a program that focuses on the intersection of law and business, we also have an online discussion of Mattel’s business decision in pursing this case. The company likely spent hundreds of thousands of dollars in attorney’s fees and litigation expenses going against an artist who sold a few thousand dollars’ worth of photographs. As someone who has spent a lot of time researching fair use cases, I believe that Mattel had a weak case at best, and indeed, the court described Mattel’s trademark claims as possibly “groundless or unreasonable.” So why did Mattel spend the money?
WIN OR LOSE
The discussion has been fascinating in that a number of comments have focused on Mattel’s need to defend the Barbie brand and its integrity, as well as its willingness to take a near-term financial hit in order to pursue long-term profitability. Others have suggested that Mattel’s main goal—win or lose—was to intimidate others into thinking twice before using Barbie in their art or for similar purposes.
The Mattel case immediately came to mind as I read about a growing trademark and copyright battle between The Walt Disney Co. and producers of merchandise featuring The Child, better known as Baby Yoda, from the Disney+ series The Mandalorian. The character appeared toward the end of the first episode of the series, which premiered with Disney+’s launch in mid-November 2019 and was an immediate hit. The character was instantly the focus of a social media explosion of memes, GIFs, fan art, and other viral content.
BABY ALIEN, SPACE GOBLIN
This focus was quickly followed by a demand for merchandise featuring the adorable character, particularly with the holidays approaching. Disney did not have merchandise available and wasn’t expecting to until 2020 (reportedly so as not to “spoil” the surprise debut of the character). So others filled in. Online sellers on Etsy, eBay, and other platforms promptly launched a wide range of products, including plush toys, knitted and crocheted items, glassware, and T-shirts and other wearables. Often these were pitched under names such as “Baby Alien,” “Space Goblin,” and “Space Child,” but the Disney-trademarked name YODA (it is common to capitalize a specific trademark to distinguish it from an underlying product) was also frequently used in the form of “Baby Yoda.” There was even a “black market Baby Yoda gift guide” available online.
In January 2020, however, Disney responded. The Wall Street Journal and other sources reported that a number of Etsy sellers had received takedown notices from Disney to remove either complete listings for Baby Yoda-related items, or at a minimum, remove the reference to the Disney trademark of YODA. In the mainstream and social media response that followed, Disney was alternately praised for defending its intellectual property and branded a bully for going after a craft community that is just trying to make a buck.
Disney is right to be concerned about misuse of its intellectual property assets. The copyright for The Child gives Disney exclusive rights to create derivative works based on the character, including plush dolls and wearables. Yes, there is no denying that using the copyright generates revenue, and likely profit, for Disney, but that revenue will presumably go toward a second season of The Mandalorian and possibly a Mandalorian-themed ride to generate huge lines at Disney parks, as well as support other Disney creative endeavors. The development of unauthorized products could dilute Disney’s ability to make its own products and, to the extent that the unauthorized products are inferior, tarnish Disney’s reputation.
The trademarks for THE CHILD and YODA are likewise entitled to protection. Although the risk is low, failing to protect a brand can result in it becoming generically similar to the underlying product, such as with aspirin and the escalator. Of greater concern is the potential for dilution of the brand by inferior products. Brands have value because of an association of the product with a certain provider based on consumer expectations of a certain quality. Items of inferior quality can reduce that value even when the consumer may know that the provider did not necessary create the inferior product.
THE LION KING
In this social media environment, an overreaction by a copyright or trademark owner can lead to a reputation as an intellectual property bully. At nearly the same time the Baby Yoda challenges arose, Disney was in the media over a story that it had charged a California elementary school PTA for showing its movie The Lion King at a fundraiser. The fine appears to have been actually levied by the film licensing company and was technically correct based on the licensing terms that DVDs are sold under. However, after several days of bad publicity, Disney’s then CEO, Bob Iger, publicly apologized and offered a donation to the PTA.
From the reports on the Baby Yoda issue, it does appear that Disney has been fairly restrained, going after a limited number of online sellers with takedown notices rather than lawsuits. There remain thousands of listings of Baby Alien, Space Child, and Baby Yoda merchandise on Etsy, while official merchandise is now available at The Disney Store (online as well as at brick-and-mortar locations).
MATTEL AND DISNEY: TWO CASE STUDIES
When I teach this class next year, I may use both the Mattel/Barbie and Disney/Baby Yoda cases as examples of different mechanisms for addressing the challenge of infringing works. Lawsuit versus takedown, brand protection versus brand bully. I suspect it will be an interesting discussion.