{"id":5653,"date":"2009-06-16T09:20:35","date_gmt":"2009-06-16T14:20:35","guid":{"rendered":"http:\/\/law.marquette.edu\/facultyblog\/?p=5653"},"modified":"2009-06-16T21:47:25","modified_gmt":"2009-06-17T02:47:25","slug":"why-intellectual-property-is-often-literally-the-%e2%80%9cicing-on-the-cake%e2%80%9d","status":"publish","type":"post","link":"https:\/\/law.marquette.edu\/facultyblog\/2009\/06\/why-intellectual-property-is-often-literally-the-%e2%80%9cicing-on-the-cake%e2%80%9d\/","title":{"rendered":"Why Intellectual Property is Often (Literally) the \u201cIcing on the Cake\u201d"},"content":{"rendered":"

\"barbie-cake\"I often\u00a0tell my students that Intellectual Property is like the \u201cicing on the cake\u201d\u2014the \u201ccake\u201d being the structure created by a product or service to which Intellectual Property law (IP) applies.\u00a0 <\/span>As I will elaborate in a future post, this is one of the reasons why I like IP so much.\u00a0 <\/span>In other words, while the technical application of IP is undoubtedly complicated and challenging, IP is often just the last step of a production or creation process.\u00a0 It is like the icing on a cake — that final layer that ties everything together.\u00a0 <\/span>Yet\u00a0this layer is absolutely necessary to complete the work and often represents the sine qua non of why the public will buy the cake.\u00a0 It determines whether\u00a0a product will be successful or not.\u00a0 <\/span>This post, however, is not about IP theory . . .\u00a0it is really about cakes, icing, and IP.<\/p>\n

<\/p>\n

Last week was my husband\u2019s birthday and that, as is the case for all of the birthdays in our family, means primarily one thing: a celebration with a Simma\u2019s cheesecake (for those new to Milwaukee, Simma\u2019s Bakery <\/a>in Wauwatosa is a must see, and eat, in the region!). So, following\u00a0tradition, I went to Simma’s and purchased the cake (traditional chocolate icing with primary color balloons). Because both my daughter and son\u2019s birthdays will be at the end of August (they will turn 1 and 3 respectively) and we will be gone most of the summer, I also\u00a0decided to look into \u201cpreliminary steps\u201d to order their cakes which,\u00a0due to their ages, will have\u00a0a more \u201cpersonalized\u201d design (maybe my husband would have also liked a more personalized cake; we will see what we can do next year).<\/p>\n

While flipping the pages of the various catalogs on \u201cpersonalized icing\u201d options for cakes, I\u00a0soon\u00a0realized that the world of personalized cakes is\u00a0richer than ever. Do you want Elmo? Or some\u00a0sort of Princess? Or Shrek (with or without Donkey)? Customers can pick any favorite cartoon (old or new), or character (Hanna Montana, Dora, Diego, or Barbie anyone?), etc.\u00a0 <\/span>It is obvious that this is a flourishing business and entertainment companies came to this realization long\u00a0ago.\u00a0 <\/span>In fact, every page with the personalized icing options also\u00a0invariably carried a\u00a0notice that the respective characters are\u00a0used \u201cunder the authorization\u201d of the rights\u2019 owner.\u00a0 <\/span>So, if I were to\u00a0pick Elmo, my icing would not be the result of the creative handiwork of the workers at Simma\u2019s but instead the application of a pre-made decorative sheet (purchased by Simma\u2019s and made under the control and license of the owner of the rights of the Sesame Street’s characters) that would be applied on the icing as part of the cake decoration.<\/p>\n

Some IP scholars in the country would argue that such use of characters (and related trademarks) should not be limited only to authorized copies and that the creative (non authorized) use of existing trademarks (not so much copyrights, which enjoy a less disputed \u201cproperty\u201d status in US law) would not represent an infringement.\u00a0 <\/span>In general, however, it has become increasingly accepted in the business world that characters used in such icing designs should be authorized and most shops, including small bakeries, duly ask for authorization prior to their use.<\/p>\n

What, however, caught my attention during this (mouth-watering) search for the perfect cake for my children was a picture of a \u201cBarbie Cake\u201d (see the thumbnail photo above). \u00a0<\/span>As it is clear from the picture, this cake is the result of putting a Barbie doll in the middle of a cake, which then is molded into\u00a0a ball dress for the doll herself.\u00a0 <\/span>The page depicting this cake did not have disclaimers of any sort. When I saw the picture, I\u00a0asked the lady at the counter: \u201cDo you ask Mattel for the authorization to use Barbie in your cakes?\u201d\u00a0 As always, the IP lawyer in me could not resist the inquiry.\u00a0 The clerk\u00a0gave me an inquisitive look (the same type of look I often get from people working in stores to whom I ask \u201cIP type of questions\u201d) and simply answered \u201cPeople bring in their dolls and we build the cake around the doll.\u201d\u00a0 <\/span>\u201cAhh \u2026\u201d I said \u201cit is a sort of first sale rule exception\u201d, and quickly lowered my gaze\u00a0back to\u00a0the \u201cicing options book\u201d to avoid seeing\u00a0her\u00a0reaction.<\/p>\n

To translate for non IP experts, every product that has been put into the market (i.e. sold or otherwise released) is subject to the so called \u201cfirst sale rule.\u201d\u00a0 In the US this extends\u00a0geographically to the\u00a0national market, but\u00a0not to products coming from outside the US.\u00a0 <\/span>Specifically, once we buy (or are given as a gift or otherwise legally obtain) a product, we are free to resell it, gift it to someone else, etc. This rule, which may seem obvious, but\u00a0is not necessarily so, also applies to retailers (so businesses like TJ Max can sell \u201cbranded\u201d goodies at a fraction of their \u201coriginal\u201d price).\u00a0 <\/span>Yet, as a limitation to this \u201cresale\u201d or \u201cproduct circulation\u201d rule, the law says that even legitimately purchased products cannot be resold under the \u201cfirst sale rule\u201d if they have been changed or altered, since consumers may erroneously believe that the first owner (Mattel here for Barbie) is responsible for the changes.<\/p>\n

So, back to the \u201cBarbie Cake.\u201d\u00a0 The use of \u201cmy Barbie doll\u201d \u2014 a legitimately purchased Barbie \u2014 as part of a birthday cake for my child seems to fit within the \u201cfirst sale rule\u201d exception.\u00a0 Therefore,\u00a0no authorization from Mattel seems to be required for such use of the doll.\u00a0 <\/span>Specifically, the bakery uses \u201cmy doll\u201d and I, the consumer of the cake, clearly know what I want (a cake that incorporates my doll as part of it).\u00a0 I\u00a0also know that Mattel does not have any part in this process\u2014that is, if the cake is bad or there is anything wrong with it, I will go back to Simma\u2019s, and not to Mattel, to complain.\u00a0\u00a0That said, it is still foreseeable\u00a0that the use of Barbie for \u201ccommercial purposes\u201d (the bakery building the cake around \u201cmy doll\u201d for a profit) could potentially be seen as \u201cnon authorized\u201d and therefore\u00a0forbidden.\u00a0 <\/span>It might\u00a0be argued that other consumers (either my guests at the birthday party or other people waiting at Simma\u2019s while I pick up the cake) will\u00a0believe that Mattel has somewhat authorized or sponsored such cakes (and maybe Mattel is already planning to enter the \u201cthree-dimensional cakes\u201d business).<\/p>\n

Still, if I were Mattel, I would not bring a suit of any sort against Simma\u2019s.\u00a0 <\/span>In fact, since the subject matter here is Barbie, the likelihood that the courts will rule against the\u00a0use of the doll by a bakery is very low, if not non-existent.\u00a0 <\/span>Courts have previously ruled that Barbie is a \u201cmodern icon\u201d and as such her use by the public (for sculpture, music, etc.) cannot be prevented.\u00a0 <\/span>The most relevant case on this area came from the Ninth Circuit a few years ago in Mattel v. MCA Records<\/a>.\u00a0 <\/span>Here the court ruled in favor of MCA in the matter of the song \u201cBarbie Girl,\u201d and its related video, performed by the Swedish Group \u201cAqua.\u201d\u00a0 In my Intellectual Property Class we\u00a0listen to the song and watch the video ( no wonder\u00a0IP is a fun class!).\u00a0\u00a0B<\/span>ased on the foregoing analysis, I would be inclined to say that the use of a Barbie doll for a cake most likely does not represent a trademark infringement of any sort (even if I would not go so\u00a0far as to say that to a business engaged in the\u00a0mass production of such cakes would be permitted, since I think that this latter example would more likely be an infringement).<\/p>\n

So, what did I conclude about my\u00a0childrens’ cakes?\u00a0\u00a0Probably not this year, because my daughter will be too young, but in future years I\u00a0will definitely consider the option of a birthday \u201cBarbie Cake\u201d!<\/p>\n","protected":false},"excerpt":{"rendered":"

I often\u00a0tell my students that Intellectual Property is like the \u201cicing on the cake\u201d\u2014the \u201ccake\u201d being the structure created by a product or service to which Intellectual Property law (IP) applies.\u00a0 As I will elaborate in a future post, this is one of the reasons why I like IP so much.\u00a0 In other words, while […]<\/p>\n","protected":false},"author":40,"featured_media":0,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"ocean_post_layout":"","ocean_both_sidebars_style":"","ocean_both_sidebars_content_width":0,"ocean_both_sidebars_sidebars_width":0,"ocean_sidebar":"","ocean_second_sidebar":"","ocean_disable_margins":"enable","ocean_add_body_class":"","ocean_shortcode_before_top_bar":"","ocean_shortcode_after_top_bar":"","ocean_shortcode_before_header":"","ocean_shortcode_after_header":"","ocean_has_shortcode":"","ocean_shortcode_after_title":"","ocean_shortcode_before_footer_widgets":"","ocean_shortcode_after_footer_widgets":"","ocean_shortcode_before_footer_bottom":"","ocean_shortcode_after_footer_bottom":"","ocean_display_top_bar":"default","ocean_display_header":"default","ocean_header_style":"","ocean_center_header_left_menu":"","ocean_custom_header_template":"","ocean_custom_logo":0,"ocean_custom_retina_logo":0,"ocean_custom_logo_max_width":0,"ocean_custom_logo_tablet_max_width":0,"ocean_custom_logo_mobile_max_width":0,"ocean_custom_logo_max_height":0,"ocean_custom_logo_tablet_max_height":0,"ocean_custom_logo_mobile_max_height":0,"ocean_header_custom_menu":"","ocean_menu_typo_font_family":"","ocean_menu_typo_font_subset":"","ocean_menu_typo_font_size":0,"ocean_menu_typo_font_size_tablet":0,"ocean_menu_typo_font_size_mobile":0,"ocean_menu_typo_font_size_unit":"px","ocean_menu_typo_font_weight":"","ocean_menu_typo_font_weight_tablet":"","ocean_menu_typo_font_weight_mobile":"","ocean_menu_typo_transform":"","ocean_menu_typo_transform_tablet":"","ocean_menu_typo_transform_mobile":"","ocean_menu_typo_line_height":0,"ocean_menu_typo_line_height_tablet":0,"ocean_menu_typo_line_height_mobile":0,"ocean_menu_typo_line_height_unit":"","ocean_menu_typo_spacing":0,"ocean_menu_typo_spacing_tablet":0,"ocean_menu_typo_spacing_mobile":0,"ocean_menu_typo_spacing_unit":"","ocean_menu_link_color":"","ocean_menu_link_color_hover":"","ocean_menu_link_color_active":"","ocean_menu_link_background":"","ocean_menu_link_hover_background":"","ocean_menu_link_active_background":"","ocean_menu_social_links_bg":"","ocean_menu_social_hover_links_bg":"","ocean_menu_social_links_color":"","ocean_menu_social_hover_links_color":"","ocean_disable_title":"default","ocean_disable_heading":"default","ocean_post_title":"","ocean_post_subheading":"","ocean_post_title_style":"","ocean_post_title_background_color":"","ocean_post_title_background":0,"ocean_post_title_bg_image_position":"","ocean_post_title_bg_image_attachment":"","ocean_post_title_bg_image_repeat":"","ocean_post_title_bg_image_size":"","ocean_post_title_height":0,"ocean_post_title_bg_overlay":0.5,"ocean_post_title_bg_overlay_color":"","ocean_disable_breadcrumbs":"default","ocean_breadcrumbs_color":"","ocean_breadcrumbs_separator_color":"","ocean_breadcrumbs_links_color":"","ocean_breadcrumbs_links_hover_color":"","ocean_display_footer_widgets":"default","ocean_display_footer_bottom":"default","ocean_custom_footer_template":"","ocean_post_oembed":"","ocean_post_self_hosted_media":"","ocean_post_video_embed":"","ocean_link_format":"","ocean_link_format_target":"self","ocean_quote_format":"","ocean_quote_format_link":"post","ocean_gallery_link_images":"on","ocean_gallery_id":[],"footnotes":""},"categories":[7,34],"tags":[],"class_list":["post-5653","post","type-post","status-publish","format-standard","hentry","category-intellectual-property-law","category-legal-education","entry"],"_links":{"self":[{"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/posts\/5653","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/users\/40"}],"replies":[{"embeddable":true,"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/comments?post=5653"}],"version-history":[{"count":0,"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/posts\/5653\/revisions"}],"wp:attachment":[{"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/media?parent=5653"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/categories?post=5653"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/law.marquette.edu\/facultyblog\/wp-json\/wp\/v2\/tags?post=5653"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}