In 1997 a PR Agency and an urban artist combined to create a PR stunt to promote Mattel’s “Barbie” doll. Five years on a row over the concept’s ownership still simmers. Who owns what in creative concepts?
Topic: Intellectual Property
Who: Mattel, Beer Davies Communications and Ben Jones
When: January 2002
More sparks recently flew in the form of solicitors' letters in the long-running dispute over whose idea it was to paint a street of terraced houses pink as a publicity stunt to promote Mattel's "Barbie" doll. It all started back in 1997, when PR Consultancy Beer Davies Communications were challenged by Mattel to devise an attention-grabbing event as the basis of a campaign to promote "Barbie". Beer Davies worked with a then urban artist by the name of Ben Jones and the idea was hit upon to paint a street of terraced houses Barbie pink. The resulting "Pink Street" campaign was a big success. That was the end of one saga, but the beginning of another. A spat then ensued between Beer Davies and Ben Jones, (who has since become creative director of cutting edge PR consultancy Cake) as to which of them was entitled to take the credit for the "Pink Street" concept. Marketinglaw is not aware of the background facts, or of the detailed arguments put forward by the protagonists. It is a fair bet, however, that each claimed the fundamental idea was their own, with the other only providing a helping hand.
Why this matters:
It is not known what hangs on the outcome of the row, but in cases like this there are often claims that copyright or some other intellectual property right in the concept is owned by one side or the other, or indeed in this case perhaps by the client.
The bottom line, however, is that a simple concept like this, however powerful and innovative, is unlikely to be protectable by any recognised intellectual property right. There is no work of sculpture, photograph or graphic work here of the kind to which copyright will attach. There is no industrial process or registrable design and no trade mark capable of registration by either Beer Davies or Jones. Certainly the rules for what can and can't be registered as a trade mark have relaxed in recent years, and it might just be possible to register the image of a street painted pink as a trade mark in respect of games and playthings including dolls. As is always the case in a client/agency relationship, however, any attempt by an agency to register such a concept would not be sustainable in the name of the agency. This is because the applicant must have a bona fide intention to itself use the trade mark in connection with the sale and promotion of its own products.
A last resort in terms of intellectual property rights might be a claim of "passing off" against any third party who tried to use a "pink street" concept to market its products. Again, however, neither Beer Davies nor Jones would have any claim. It would be only Mattel, as the owner of the goodwill and reputation generated by the use of the concept, who would be able to sue. Strangely enough it is not the law of intellectual property, but the law of contract which is more likely to help in these situations. We do not know whether was a written contract between Beer Davies and Jones governing their relationship, but if there had been a provision in such a contract making it quite clear who was to own and be entitled to any beneficial interest in any concept or material created, then all subsequent argument could have been avoided.