Mattel v Walking Mountain Productions - Law - Case Study, Study Guides, Projects, Research of Law

Download Mattel v Walking Mountain Productions - Law - Case Study and more Study Guides, Projects, Research Law in PDF only on Docsity! FOR PUBLICATION UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT MATTEL INC., a Delaware Corporation, No. 01-56695 Plaintiff-Appellant, C.D. Cal. No. v. CV-99-08543- RSWLWALKING MOUNTAIN PRODUCTIONS, a California Business Entity; TOM N.D. Cal. No. FORSYTHE, an individual d/b/a CV-01-0091 Walking Mountain Productions, Misc. WHA Defendants-Appellees.  MATTEL INC., a Delaware No. 01-57193 Corporation, C.D. Cal. No.Plaintiff-Appellee, CV-99-08543- v. RSWLWALKING MOUNTAIN PRODUCTIONS, N.D. Cal. No. a California Business Entity; TOM CV-01-0091 FORSYTHE, an individual d/b/a Misc. WHA Walking Mountain Productions, OPINIONDefendants-Appellants.  Appeal from the United States District Court for the Central District of California Ronald S.W. Lew, District Judge, Presiding and United States District Court for the Northern District of California William H. Alsup, District Judge, Presiding Argued and Submitted March 6, 2003—Pasadena, California 18165 Filed December 29, 2003 Before: Harry Pregerson and Sidney R. Thomas, Circuit Judges, and Louis F. Oberdorfer, Senior District Judge.* Opinion by Judge Pregerson *The Honorable Louis F. Oberdorfer, Senior Judge, United States Dis- trict Court for the District of Columbia, sitting by designation. 18166 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS perfection-obsessed consumer culture.” Forsythe claims that, throughout his series of photographs, he attempts to commu- nicate, through artistic expression, his serious message with an element of humor. Forsythe’s market success was limited. He displayed his works at two art festivals — the Park City Art Festival in Park City, Utah, and the Plaza Art Fair in Kansas City, Missouri.2 He promoted his works through a postcard, a business card, and a website. Forsythe printed 2000 promotional postcards depicting his work, “Barbie Enchiladas,” only 500 of which were ever circulated. Of those that were circulated, some were distributed throughout his hometown of Kanab and some to a feminist scholar who used slides of Forsythe’s works in her academic presentations. He also sold 180 of his postcards to a friend who owned a book store in Kanab so she could resell them in her bookstore and sold an additional 22 postcards to two other friends. Prior to this lawsuit, Forsythe received only four or five unsolicited calls inquiring about his work. The “Food Chain Barbie” series earned Forsythe total gross income of $3,659.3 Forsythe also produced 1,000 business cards which depicted “Champagne Barbie.” His name and self-given title “Artsurdist” were written on the card. He used these cards at fairs and as introductions to gallery owners. Finally, Forsythe had a website on which he depicted low resolution pictures of his photographs. The website was not configured for online purchasing. “Tom Forsythe’s Artsurdist 2Additionally, Forsythe’s works were chosen for display in various exhibitions, including the Dishman Competition at Lamar University in Texas, and the Through the Looking Glass Art Show in Los Alamos, New Mexico. Some of his “Food Chain Barbie” photographs were also selected for exhibition by the Deputy Director and Chief Curator of the Guggen- heim Museum of Modern Art in New York. 3Purchases by Mattel investigators comprised at least half of Forsythe’s total sales. 18172 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS Statement,” in which he described his intent to critique and ridicule Barbie, was featured on his website. His website also contained a prominent link to his biography. On August 23, 1999, Mattel filed this action in the United States District Court for the Central District of California (the “Los Angeles federal district court”) against Forsythe, alleg- ing that Forsythe’s “Food Chain Barbie” series infringed Mat- tel’s copyrights, trademarks, and trade dress. Forsythe filed a motion to dismiss Mattel’s First Amended Complaint, which was granted with leave to amend. Mattel filed a Second Amended Complaint, and Forsythe again moved for dis- missal. The motion was granted in part; the court dismissed with prejudice Mattel’s Eleventh Claim for federal trade libel. On August 11, 2000, Mattel moved for a preliminary injunction. The district court denied the motion; we summa- rily affirmed. Mattel, Inc. v. Walking Mountain Prods., No. 00-56733, 4 Fed. App. 400, 2001 WL 133145 (9th Cir. Feb. 15, 2001) (unpublished). During discovery, Forsythe served on Mattel the Federal Rule of Civil Procedure 26(a)(2)(B) expert witness report of Dr. Douglas Nickel, an expert on art history and curator of photography at the San Francisco Museum of Modern Art (the “SFMOMA”). Nickel’s report focused on the traditions of twentieth century artists, in which Forsythe’s works were properly understood. On April 30, 2001, after receiving that report, Mattel sub- poenaed Dr. Nickel to appear for a deposition and to produce certain documents. On or about May 15, 2001, Mattel served a Federal Rule of Civil Procedure 30(b)(6) subpoena on the SFMOMA (the “Subpoena” or “SFMOMA Subpoena”), a non-party to this action.4 The Subpoena demanded all docu- 4Rule 30(b)(6) depositions, such as the one demanded by Mattel in the Subpoena, are often referred to as “persons most knowledgeable” or “per- 18173MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS ments relating to Forsythe and his works, all documents relat- ing to Mattel or Barbie, and all documents relating to the SFMOMA’s “policy or practice relating to the third-party copying, reproduction, or photographing” of works in which the SFMOMA had a proprietary interest. The Subpoena also demanded that the SFMOMA produce a witness or witnesses to testify at deposition on various topics including the follow- ing: licensing of artworks owned by SFMOMA, including licensed products, royalty rates, and the advertising markets, and sales channels for such products and “the number, iden- tity, nature and results of lawsuits or other legal action taken . . . or cease and desist letters sent by” the SFMOMA over the past five years related to reproduction of artwork owned by the SFMOMA. On May 24, 2001, the SFMOMA served writ- ten objections to the Subpoena on Mattel. On May 30, 2001, Mattel filed an ex parte application in the United States District Court for the Northern District of California (the “San Francisco federal district court”) to enforce the Subpoena and to compel the SFMOMA to pro- duce documents and its representative(s) for a deposition. Mattel claimed that the Subpoena would aid discovery in Mattel’s action against Forsythe. The SFMOMA opposed the ex parte application. On June 4, 2001, the San Francisco federal district court denied the application, quashed the Subpoena, and held that it would award the SFMOMA’s counsel fees and expenses incurred in opposing the application. The parties were unable to agree on fees, and the SFMOMA’s counsel submitted an itemized statement of fees and costs. The court subsequently issued a written “Order Determining Amount of Attorney’s sons most qualified” depositions because “the notice of deposition or sub- poena is directed at the entity itself” and “[t]he entity will then be obligated to produce the ‘most qualified’ person [or persons] to testify on its behalf . . . .” Schwarzer, Tashima & Wagstaffe, Cal. Prac. Guide: Fed. Civ. Pro. Before Trial ¶ 11:1409 at 11-142 (The Rutter Group 2003). 18174 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS Superstar Barbie head6 and parts of the figure including revi- sions to the hands, feet, neck, shoulder and buttocks. Because Forsythe photographed the Barbie figure and reproduced those photographs, Mattel has established a prima facie case of copyright infringement. [1] Consistent with its policy goals, however, the Copyright Act recognizes certain statutory exceptions to protections on copyrights. At its core, the Act seeks to promote the progress of science and art by protecting artistic and scientific works while encouraging the development and evolution of new works. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575-76 (1994). Recognizing that science and art generally rely on works that came before them and rarely spring forth in a vacuum, the Act limits the rights of a copyright owner regarding works that build upon, reinterpret, and reconceive existing works. See id. at 575-77 (“[F]ew, if any, things . . . are strictly new and original throughout. Every book in litera- ture, science and art, borrows, and must necessarily borrow . . . .” (quoting Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D. Mass. 1845) (No. 4,436)). The fair use exception excludes from copyright restrictions certain works, such as those that criticize and comment on another work. 17 U.S.C. § 107. See also Dr. Suess Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1399 (9th Cir.) (holding that fair use “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster”), cert. dismissed, 521 U.S. 1146 (1997). [2] To determine whether a work constitutes fair use, we engage in a case-by-case analysis and a flexible balancing of relevant factors. Campbell, 510 U.S. at 577-78. The factors are “to be explored, and the results weighed together, in light of the purposes of copyright.” Id. at 578. Depending on the particular facts, some factors may weigh more heavily than 6“Unadorned” includes only the facial structure without hair, eyebrows, eye color, eye lashes, lip color, and painted teeth. 18177MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS others. Id. at 577-79. The four factors we consider are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational pur- poses; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copy- righted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Dr. Seuss, 109 F.3d at 1399-1404 (analyzing and applying 17 U.S.C. § 107). The district court concluded that Forsythe’s reproduction of Mattel’s copyrighted Barbie was fair use. The district court reasoned that a trier of fact could only conclude that Forsy- the’s works were fair use because: (1) his use was parody meant to criticize Barbie, (2) he only copied what was neces- sary for his purpose, and (3) his photographs could not affect the market demand for Mattel’s products or those of its licens- ees. Where material facts are not in dispute, fair use is appropri- ately decided on summary judgment. Harper & Row, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985). We recently noted “[a]s fair use is a mixed question of fact and law, so long as the record is ‘sufficient to evaluate each of the statutory fac- tors,’ we may reweigh on appeal the inferences to be drawn from that record.” L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 942 (quoting Harper & Row, 471 U.S. at 560), as amended, 313 F.3d 1093 (9th Cir. 2002). Because we agree with the district court that no triable issues of fact exist on whether Forsythe’s use of Mattel’s Bar- bie constitutes fair use, we weigh the four § 107 fair use fac- tors on appeal. We conclude that Forsythe’s use of Mattel’s copyrighted Barbie constitutes fair use and affirm the district court’s grant of summary judgment. A. Purpose and Character of Use The “purpose and character of use” factor in the fair use inquiry asks “to what extent the new work is transformative” 18178 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS and does not simply “supplant[ ]” the original work and whether the work’s purpose was for- or not-for-profit. Camp- bell, 510 U.S. at 579, 584. A work must add “something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Id. at 579. The Supreme Court has rec- ognized that parodic works, like other works that comment and criticize, are by their nature often sufficiently transforma- tive to fit clearly under the fair use exception. Id. (recognizing that parody “has an obvious claim to transformative value”). In our circuit, a “parodist is permitted a fair use of a copy- righted work if it takes no more than is necessary to ‘recall’ or ‘conjure up’ the object of his parody.” Dr. Suess, 109 F.3d at 1400. A parodic work, however, like other potential fair uses, has to “work its way through the relevant factors, and be judged case by case, in light of the ends of copyright law.” Campbell, 510 U.S. at 581. [3] “[T]he threshold question [in the analysis of this first factor] . . . is whether a parodic character may reasonably be perceived.” Id. at 582. See also Dr. Suess, 109 F.3d at 1400. Mattel argues that the district court erred in finding parody because a reasonable jury could conclude that Forsythe’s works do not parody Mattel’s Barbie. In support of this argu- ment, Mattel offered into evidence a survey in which they presented individuals from the general public in a shopping mall with color photocopies of Forsythe’s photographs and asked them what meaning they perceived. Relying on this sur- vey, Mattel asserts that only some individuals may perceive parodic character. The issue of whether a work is a parody is a question of law, not a matter of public majority opinion. See Campbell, 510 U.S. at 582-83; Dr. Suess, 109 F.3d at 1400-01 (“[U]nless the plaintiff’s copyrighted work is at least in part the target of the defendant’s satire, then the defendant’s work is not a ‘par- ody’ in the legal sense . . . .” (emphasis added)). Forsythe cor- 18179MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS known smile, disturbingly oblivious to her predicament. As portrayed in some of Forsythe’s photographs, the appliances are substantial and overwhelming, while Barbie looks defenseless. In other photographs, Forsythe conveys a sexual- ized perspective of Barbie by showing the nude doll in sexu- ally suggestive contexts. It is not difficult to see the commentary that Forsythe intended or the harm that he per- ceived in Barbie’s influence on gender roles and the position of women in society. However one may feel about his message — whether he is wrong or right, whether his methods are powerful or banal — his photographs parody Barbie and everything Mattel’s doll has come to signify. Undoubtedly, one could make similar statements through other means about society, gender roles, sexuality, and perhaps even social class. But Barbie, and all the associations she has acquired through Mattel’s impressive marketing success, conveys these messages in a particular way that is ripe for social comment.7 [7] Parody emerges from this “joinder of reference and ridi- cule.” Campbell, 510 U.S. at 583; cf. Dr. Suess, 109 F.3d at 1401 (holding that defendants who wrote a poem titled “Cat NOT in the HAT” about the O.J. Simpson trial were not paro- 7Mattel strongly argues that Forsythe’s work is not parody because he could have made his statements about consumerism, gender roles, and sex- uality without using Barbie. Acceptance of this argument would severely and unacceptably limit the definition of parody. We do not make judg- ments about what objects an artist should choose for their art. For exam- ple, in Campbell, the Supreme Court found that hip-hop band 2-Live Crew’s rendition of “Pretty Woman” was a parody because it targeted the original song and commented “on the naivete of the original of an earlier day, as a rejection of its sentiment that ignores the ugliness of street life and the debasement that it signifies.” 510 U.S. at 583. No doubt, 2-Live Crew could have chosen another song to make such a statement. Parody only requires that “the plaintiff’s copyrighted work is at least in part the target of the defendant’s satire,” not that the plaintiff’s work be the irre- placeable object for its form of social commentary. Dr. Seuss, 109 F.3d at 1400. 18182 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS dying Dr. Suess’ original work because the stanzas had “no critical bearing on the substance or style of” the original). By developing and transforming associations with Mattel’s Bar- bie doll, Forsythe has created the sort of social criticism and parodic speech protected by the First Amendment and pro- moted by the Copyright Act. We find that this factor weighs heavily in favor of Forsythe. Another element of the first factor analysis is whether the work’s “purpose” was commercial or had a non-profit aim. Campbell, 510 U.S. at 584. Clearly, Forsythe had a commer- cial expectation and presumably hoped to find a market for his art. However, as the Supreme Court noted in Campbell, even works involving comment and criticism “are generally conducted for profit in this country.” Id. (quoting Harper & Row, 471 U.S. at 592.) On balance, Forsythe’s commercial expectation does not weigh much against him. Given the extremely transformative nature and parodic quality of Forsy- the’s work, its commercial qualities become less important. Id. at 579 (recognizing that the more “transformative the new work, the less will be the significance of the other factors”). B. Nature of the copyrighted work The second factor in the fair use analysis “recognizes that creative works are ‘closer to the core of intended copyright protection’ than informational and functional works.” Dr. Seuss, 109 F.3d at 1402 (quoting Campbell, 510 U.S. at 586). Mattel’s copyrighted Barbie figure and face can fairly be said to be a creative work. However, the creativity of Mattel’s copyrighted Barbie is typical of cases where there are infring- ing parodies. Campbell, 510 U.S. at 586 (“[P]arodies almost invariably copy publicly known, expressive works.”). As we have recognized in the past, “this [nature of the copyrighted work] factor typically has not been terribly significant in the overall fair use balancing.” Dr. Suess, 109 F.3d at 1402. In any event, it may weigh slightly against Forsythe. 18183MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS C. Amount and substantiality of the portion used. The third factor in the fair use analysis asks whether “ ‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole,’ are reasonable in relation to the purpose of copying.” Id. (quoting 17 U.S.C. § 107(3)). We assess the “persuasiveness of a parodist’s justification for the particular copying done,” recognizing that the “extent of per- missible copying varies with the purpose and character of the use.” Campbell, 510 U.S. at 586-87. [8] Mattel argues that Forsythe used the entirety of its copyrighted work and that this factor weighs against him. Mattel contends that Forsythe could have used less of the Bar- bie figure by, for example, limiting his photos to the Barbie heads. First, Forsythe did not simply copy the work “verbatim” with “little added or changed.” Id. at 587-88.8 A verbatim copy of Barbie would be an exact three dimensional reproduc- tion of the doll. Forsythe did not display the entire Barbie head and body in his photographs. Parts of the Barbie figure are obscured or omitted depending on the angle at which the photos were taken and whether other objects obstructed a view of the Barbie figure. Second, Mattel’s argument that Forsythe could have taken a lesser portion of its work attempts to benefit from the some- what unique nature of the copyrighted work in this case. Copyright infringement actions generally involve songs, video, or written works. See, e.g., Elvis Presley Enters., Inc. 8We have, however, held that entire verbatim reproductions are justifi- able where the purpose of the work differs from the original. Kelly, 336 F.3d at 821 (“This factor neither weighs for nor against either party because, although [the defendant] did copy each of [the plaintiff’s] images as a whole, it was reasonable to do so in light of [the defendant’s] use of the images.”). 18184 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS the’s work, however, it is highly unlikely that it will substitute for products in Mattel’s markets or the markets of Mattel’s licensees. In Campbell, the Court clearly stated, “as to parody pure and simple, it is more likely that the new work will not affect the market for the original in a way cognizable under this factor.” Campbell, 510 U.S. at 591. Nor is it likely that Mattel would license an artist to create a work that is so criti- cal of Barbie. “[T]he unlikelihood that creators of imaginative works will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market.” Id. at 592. As to Mattel’s claim that Forsythe has impaired Barbie’s value, this fourth factor does not recognize a decrease in value of a copyrighted work that may result from a particularly powerful critical work. Id. at 593 (“The fact that a parody may impair the market for derivative uses by the very effec- tiveness of its critical commentary is no more relevant under copyright than the like threat to the original market . . . .”). We recognize, however, that critical works may have another dimension beyond their critical aspects that may have effects on potential markets for the copyrighted work. Id. at 592 (rec- ognizing that the new work “may have a more complex char- acter, with effects not only in the arena of criticism but also in protectable markets for derivative works”). Thus, we look more generally, not only to the critical aspects of a work, but to the type of work itself in determining market harm. Id. at 593 (looking beyond the critical aspect of 2 Live Crew’s rap rendition of “Pretty Woman” to the derivative market for rap music). Given the nature of Forsythe’s photographs, we decline Mattel’s invitation to look to the licensing market for art in general. Forsythe’s photographs depict nude and often sexualized figures, a category of artistic photography that Mattel is highly unlikely to license. “The existence of this potential market cannot be presumed.” Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 972 (9th Cir. 1992), cert. denied, 507 U.S. 985 (1993). 18187MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS In a case almost identical to this one, Mattel, Inc. v. Pitt (“Pitt”), 229 F. Supp. 2d 315, 321-22 (S.D.N.Y. 2002), the Southern District Court of New York found no danger of potential market harm to derivative uses. In Pitt, Mattel brought a copyright infringement suit against Susanne Pitt, an artist who sold and designed a line of figures called “Dungeon Dolls.” These dolls were essentially Barbie dolls, physically altered, clothed in sadomasochistic attire, and placed in con- texts with like themes. Id. Having found the works suffi- ciently transformative, the Pitt court concluded that potential market harm was improbable because Mattel was unlikely to develop or license others to develop a product in the “adult” doll market. Id. at 324. Forsythe’s work could only reasonably substitute for a work in the market for adult-oriented artistic photographs of Barbie. We think it safe to assume that Mattel will not enter such a market or license others to do so. As the Court noted in Campbell, “the market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop.” 510 U.S. at 592. [10] Finally, the public benefit in allowing artistic creativ- ity and social criticism to flourish is great. The fair use excep- tion recognizes this important limitation on the rights of the owners of copyrights. No doubt, Mattel would be less likely to grant a license to an artist that intends to create art that crit- icizes and reflects negatively on Barbie’s image. It is not in the public’s interest to allow Mattel complete control over the kinds of artistic works that use Barbie as a reference for criti- cism and comment. [11] Having balanced the four § 107 fair use factors, we hold that Forsythe’s work constitutes fair use under § 107’s exception. His work is a parody of Barbie and highly transfor- mative. The amount of Mattel’s figure that he used was justi- fied. His infringement had no discernable impact on Mattel’s 18188 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS market for derivative uses. Finally, the benefits to the public in allowing such use — allowing artistic freedom and expres- sion and criticism of a cultural icon — are great. Allowing Forsythe’s use serves the aims of the Copyright Act by encouraging the very creativity and criticism that the Act pro- tects. Kelly, 336 F.3d at 819-20. We affirm the district court on its grant of summary judgment on Mattel’s copyright infringement claims. II. We now address whether the district court erred in granting summary judgment in favor of Forsythe on Mattel’s claims of trademark and trade dress infringement and dilution.11 As above, we review de novo a grant of summary judgment. See Oliver, 289 F.3d at 626. A. Trademark12 The limited purpose of trademark protections set forth in the Lanham Trade-Mark Act, 15 U.S.C. § 1051 et. seq., is to “avoid confusion in the marketplace” by allowing a trademark owner to “prevent[ ] others from duping consumers into buy- ing a product they mistakenly believe is sponsored by the trademark owner.” MCA, 296 F.3d at 900. Trademark law aims to protect trademark owners from a false perception that they are associated with or endorse a product. See Cairns, 292 F.3d at 1149-50. Generally, to assess whether a defendant has infringed on a plaintiff’s trademark, we apply a “likelihood of confusion” test that asks whether use of the plaintiff’s trade- mark by the defendant is “likely to cause confusion or to 11We note that, at the time that the Los Angeles federal district court decided this case, it did not have the benefit of our decision in Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002). 12A trademark is a limited property right in particular word, phrase, or symbol, 15 U.S.C. § 1051, that “is used to identify a manufacturer or sponsor of a good or the provider of a service.” MCA, 296 F.3d at 900. 18189MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS ance. The district court concluded that there was no likelihood that the public would be misled into believing that Mattel endorsed Forsythe’s photographs despite Forsythe’s use of the Barbie figure. [13] Arguably, the Barbie trade dress also plays a role in our culture similar to the role played by the Barbie trademark — namely, symbolization of an unattainable ideal of feminin- ity for some women. Forsythe’s use of the Barbie trade dress, therefore, presumably would present First Amendment con- cerns similar to those that made us reluctant to apply the Lan- ham Act as a bar to the artistic uses of Mattel’s Barbie trademark in both MCA and this case. But we need not decide how the MCA/Rogers First Amendment balancing might apply to Forsythe’s use of the Barbie trade dress because we find, on a narrower ground, that it qualifies as nominative fair use.14 14We have never applied the Rogers First Amendment balancing test to trade dress infringement claims. Even if we were to try to balance Mattel’s interest in its Barbie trade dress with Forsythe’s First Amendment right to use the trade dress in his artistic works, it is not entirely clear whether the Rogers balancing test would be apposite. The only Lanham Act claim at issue in Rogers was “essentially” a § 1125 “false advertising” claim that the defendant’s movie title “Ginger and Fred” gave “the false impression that the film is about [Ginger] Rogers and [Fred] Astaire.” Rogers, 875 F.2d at 1002. Rogers did not apply its First Amendment balancing test to — much less, even address — trade dress; trade dress was not at issue in that case. See generally id. See also Cliff’s Notes, Inc. v. Bantam Double- day Dell Publ’g Group, Inc., 718 F. Supp. 1159, 1163 (S.D.N.Y.) (“Rogers did not concern the use of a design, or trade dress, registered pursuant to the Lanham Act, but instead dealt with the specific area of titles of literary works.”), vacated, 886 F.2d 490 (2d Cir. 1989). There may be something unique about the use of a trademark in the title of a work that makes non-titular uses of trademarks or trade dress incompatible with the Rogers test. Compare Merriam-Webster, Inc. v. Random House, Inc., 815 F. Supp. 691, 704 n.16 (S.D.N.Y. 1993) (stating that the injunc- tion of Random House’s use of Merriam-Webster’s dictionary jacket trade dress “does not implicate artistic expression in a manner analogous to that in [Rogers]”), vacated on other grounds, 35 F.3d 65 (2d Cir. 1994), with Yankee Publ’g, 809 F. Supp. at 278-82 (applying the Rogers balancing test 18192 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS In the trademark context, we recently held that a defen- dant’s use is classic fair use where “a defendant has used the plaintiff’s mark only to describe his own product, and not at all to describe the plaintiff’s product.” Cairns, 292 F.3d at 1151 (emphasis in original).15 In contrast, a defendant’s use of to claim by publishers of The Old Farmer’s Almanac that publisher of New York magazine infringed the Almanac’s trade dress when New York styled its 1990 Christmas Gift issue after the Almanac). More importantly, if we were to apply the Rogers balancing test, we would have to grapple with First Amendment issues. By instead employing the nominative fair use test — which, incidentally works well in a case like this — we are fol- lowing the time-honored tradition of avoiding constitutional questions where narrower grounds are available. See, e.g., Envtl. Def. Ctr., Inc. v. EPA, 344 F.3d 832, 843 (9th Cir. 2003) (“[W]e avoid considering consti- tutionality if an issue may be resolved on narrower grounds . . . .”). See also Ashwander v. Tenn. Valley Auth., 297 U.S. 288, 345-48 (1936) (Bran- deis, J., concurring) (establishing the rule that it is always prudent to avoid passing unnecessarily on an undecided constitutional question); Joint Anti- Fascist Refugee Comm. v. McGrath, 341 U.S. 123, 154-55 (1951) (Frank- furter, J., concurring) (stating that federal courts “do not review issues, especially constitutional issues, until they have to”). Thus, we leave the applicability of the Second Circuit’s Rogers balancing test to trade dress infringement claims for another day. We also need not decide whether Mattel actually has a protectable trade dress in the particular configuration of Barbie features. Generally, to recover for trade dress infringement under § 1125, a plaintiff must show that “its trade dress is protectable and that defendant’s use of the same or similar trade dress is likely to confuse consumers.” Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir. 1987) (quoting Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 841 (9th Cir. 1987)). A trade dress is protectable if it is “nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion.” Id. (quoting Fuddruckers, 826 F.2d at 842). 15In Cairns, we cited In re Dual-Deck Video Cassette Recorder Anti- trust Litig., 11 F.3d 1460 (9th Cir.1993), as a good example of classic fair use of another’s trademark. Cairns, 292 F.3d at 1151 n. 9. In [Dual-Deck Video], the defendant sold receivers to which two videocassette recorders could be attached and labeled the relevant terminals on the backs of its machines “VCR-1” and “VCR-2.” We concluded that defendant’s use of plaintiff’s trademark 18193MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS a plaintiff’s mark is nominative where he or she “used the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal is to describe his own product.” Id. (emphasis in original).16 The goal of a nominative use is gen- erally for the “purposes of comparison, criticism [or] point of reference.” New Kids on the Block, 971 F.2d at 306. These two mutually exclusive forms of fair use are equally applica- ble here in the trade dress context.17 “VCR-2,” a descriptive mark that identified plaintiff’s two-deck videocassette recorder, was descriptive of defendant’s own prod- uct. Because defendant used plaintiff’s mark in its primary, descriptive sense and in good faith, defendant’s use was not an infringement. Brother Records, Inc. v. Jardine, 318 F.3d 900, 906 (9th Cir. 2003) (citing Dual-Deck, 11 F.3d at 1462, 1467). 16For a good example of nominative fair use of another’s trademark, see Cairns, 292 F.3d at 1152-53. See also, e.g., Abdul-Jabbar v. Gen. Motors Corp., 85 F.3d 407 (9th Cir. 1996) (applying nominative fair use analysis where the defendant automobile manufacture referred to the plaintiff, a basketball star who had won an award three years in a row, in a commer- cial for a car that also had won an award three years in a row); Volkswa- genwerk Aktiengesellshchaft v. Church, 411 F.2d 350 (applying the nominative fair use analysis where automobile repair business specializing in repair of Volkswagens placed sign in front of premises that read “mod- ern Volkswagen Porsche Service”), as amended, 413 F.2d 1126 (9th Cir. 1969). 17Our trademark infringement caselaw is generally applicable to our resolution of Mattel’s claim that Forsythe infringed its Barbie trade dress because the Supreme Court has clearly stated that trade dress and trade- mark infringement are very close cousins, both seeking to protect a desig- nation of origin. Two Pesos, 505 U.S. at 773 (stating that “§ 43(a) [of the Lanham Act, codified at 11 U.S.C. § 1125,] provides no basis for distin- guishing between trademark and trade dress . . . . There is no persuasive reason to apply different analysis to the two . . . .”). Our reluctance to apply the Second Circuit’s Rogers test to Mattel’s trade dress claim stems not from the fact that Rogers is a trademark case per se. Were the nomina- tive fair use test not available and so attractive to this claim, we very well may have had to apply Rogers. 18194 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS . . . .”). It would have been extremely difficult for Forsythe to create a photographic parody of Barbie without actually using the doll. Forsythe also satisfies the second element, which requires that a defendant only use so much of a trademark or trade dress as is reasonably necessary. As we recognized in Cairns, “[w]hat is ‘reasonably necessary to identify the plaintiff’s product’ differs from case to case.” Id. at 1154. Where identi- fication “of the defendant’s product depends on the descrip- tion [or identification] of the plaintiff’s product, more use of the plaintiff’s trademark” or trade dress is reasonably neces- sary. Id. Given the photographic medium and Forsythe’s goal of representing the social implications of Barbie, including issues of sexuality and body image, Forsythe’s use of the Bar- bie torso and head is both reasonable and necessary. It would be very difficult for him to represent and describe his photo- graphic parodies of Barbie without using the Barbie likeness. Though a “closer call than the first two elements” of the nominative fair use analysis, id. at 1155, the final element — that the user do nothing that would, in conjunction with use of the mark or dress, suggest sponsorship or endorsement by the trademark or trade dress holder — is satisfied here and weighs in Forsythe’s favor. This element does not require that the defendant make an affirmative statement that their product is not sponsored by the plaintiff. Id. Mattel attempts to argue that Forsythe suggested sponsor- ship by asserting to potential consumers that one of his photo- graphs “hangs on the wall of the office of Mattel’s President of Production,” to whom Forsythe referred as “Joe Mattel.”20 20The record does not clearly establish whether “Joe Mattel” ever existed. Mattel’s assertion, however, that “ ‘Mattel’ is not a family name, but a coined word that refers only to Mattel, the company” tends to indi- cate that “Joe Mattel” is fictitious. In any event, Forsythe claims that he believed that a senior Mattel executive whose first name is “Joe” had one of his works. 18197MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS One of the purchasers of Forsythe’s work apparently told For- sythe that he had given the work to this Mattel senior execu- tive as a gift. Forsythe repeated this fact in certain letters to galleries and friends. Forsythe claims that he had no intention of suggesting sponsorship and that he meant the statement humorously. In virtually every promotional packet in which Forsythe mentioned “Joe Mattel,” he also included a copy of his biography in which he identified himself as “someone crit- icizing Mattel’s Barbie and the values for which it stands.” The letters in the packets asserted that Forsythe was attempt- ing to “deglamourize[ ] Barbie,” “skewer[ ] the Barbie myth,” and expose an “undercurrent of dissatisfaction with consumer culture.” A similar mission statement was prominently fea- tured on his website. The rest of the materials in these promotional packets sent to galleries reduce the likelihood of any consumer confusion as to Mattel’s endorsement of Forsythe’s work. Any reason- able consumer would realize the critical nature of this work and its lack of affiliation with Mattel. Critical works are much less likely to have a perceived affiliation with the original work. New Kids on the Block, 971 F.2d at 309 (finding no suggested sponsorship in part because a poll in a magazine regarding the popularity of the New Kids asked if the New Kids had become a “turn off”).21 Moreover, even if “Joe Mat- tel” existed, we question whether possession by a third-party passive recipient of an allegedly infringing work can suggest sponsorship. We hold that Forsythe’s use of Mattel’s Barbie qualifies as nominative fair use. All three elements weigh in favor of For- 21We have also found for the defendant on this factor even in situations where there was some amount of ambiguity. See Cairns, 292 F.3d at 1154- 56 (finding no suggestion of sponsorship despite an assertion by Franklin Mint in their advertisements that all proceeds would go to Diana’s chari- ties and its assertion that a Diana porcelain doll is the only authentic rep- lica of Diana’s famous gown). 18198 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS sythe. Barbie would not be readily identifiable in a photo- graphic work without use of the Barbie likeness and figure. Forsythe used only so much as was necessary to make his parodic use of Barbie readily identifiable, and it is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated with his work. The dis- trict court’s grant of summary judgment to Forsythe on Mat- tel’s trade dress infringement claim was, therefore, proper. C. Dilution Mattel also appeals the district court’s grant of summary judgment on its trademark and dress dilution claims. The dis- trict court found that Forsythe was entitled to summary judg- ment because his use of the Barbie mark and trade dress was parody and thus “his expression is a non-commercial use.” [16] Dilution may occur where use of a trademark “whit- tle[s] away . . . the value of a trademark” by “blurring their uniqueness and singularity” or by “tarnishing them with nega- tive associations.” MCA, 296 F.3d at 903 (internal citations omitted). However, “[t]arnishment caused merely by an edito- rial or artistic parody which satirizes plaintiff’s product or its image is not actionable under an anti-dilution statute because of the free speech protections of the First Amendment . . . .” 4 McCarthy, supra, § 24:105, at 24-225. A dilution action only applies to purely commercial speech. MCA, 296 F.3d at 904. Parody is a form of noncommercial expression if it does more than propose a commercial transaction. See id. at 906. Under MCA, Forsythe’s artistic and parodic work is consid- ered noncommercial speech and, therefore, not subject to a trademark dilution claim. We reject Mattel’s Lanham Act claims and affirm the dis- trict court’s grant of summary judgment in favor of Forsythe. Mattel cannot use “trademark laws to . . . censor all parodies or satires which use [its] name” or dress. New Kids on the Block, 971 F.2d at 309. 18199MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS na”), the chief curator of which, Lisa Dennison, had prepared a declaration that Forsythe submitted in support of his opposi- tion to Mattel’s motion for preliminary injunction. Following service of the Guggenheim Subpoena, Dennison withdrew herself as a percipient witness for trial. The overbreadth of the SFMOMA Subpoena and the Gug- genheim Subpoena and the fact that the two museums’ only relation to this litigation was as employers of Forsythe’s wit- nesses led the court to conclude that the two subpoenas were served for the purpose of getting the museums to exert pres- sure on the witnesses not to testify. Thus, the court found that “a pattern is clear in this case that [Mattel’s counsel] files these oppressive subpoena requests against the employer of anyone who dares to submit a declaration even when it’s clear that the declaration says the employer is not speaking for the party.” The court concluded that the Subpoena was “served for the purpose of annoying and harassment and not really for the purpose of getting information.” Furthermore, as the SFMOMA argues, by asking it to pro- vide information on “the market for Forsythe’s works at issue in the [Los Angeles federal district court] action, including the characteristics of ‘art consumers,’ ” Mattel appeared to be seeking “expert” testimony. As the 1991 amendment notes to Federal Rule of Civil Procedure 45 states, Rule 45(c)(3)(B)(ii) was intended to provide “appropriate protection for the intel- lectual property of non-party witness . . . . A growing problem has been the use of subpoenas to compel the giving of evi- dence and information by unretained experts.” Fed. R. Civ. P. 45 1991 amend. note. Rule 45 provides that the court from which the subpoena was issued “shall quash or modify the subpoena if it . . . sub- jects a person to undue burden.” Fed. R. Civ. P. 45(c)(3)(A)(iv). Given the intended protections of the Rule and Mattel’s violation of those protections, we find that the San Francisco federal district court did not abuse its discretion 18202 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS by quashing Mattel’s subpoena, and its factual findings do not display clear error. We also affirm the San Francisco federal district court’s award of attorney’s fees. As Rule 45(c)(1) states, “[t]he court on behalf of which the subpoena was issued shall enforce this duty and impose upon the party or attorney in breach of this duty an appropriate sanction, which may include, but is not limited to . . . a reasonable attorney’s fee.” Fed. R. Civ. P. 45(c)(1). [18] Given the San Francisco federal district court’s justi- fied finding that the subpoena was overly burdensome and served for an improper purpose, the court did not abuse its discretion in awarding fees and expenses to the SFMOMA’s counsel as a sanction under Rule 45(c). V. On cross-appeal, Forsythe appeals the Los Angeles federal district court’s decision to deny attorney’s fees under the Lan- ham and Copyright Acts. We review the district court’s refusal to award fees for abuse of discretion. See Yount v. Acuff Rose-Opryland, 103 F.3d 830, 836 (9th Cir. 1996). See also Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 711 (9th Cir. 1999). Any legal analysis or statutory interpreta- tion, however, is reviewed de novo. See Entm’t Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211, 1216 (9th Cir. 1997), cert. denied, 523 U.S. 1021 (1998). In assessing whether attorney’s fees under the Copyright Act were appropriate, the district court held that the Defendants have not demonstrated that the award of $1.6 million dollars in fees and expenses would further the purposes of the Copyright Act, that plain- tiff’s case was frivolous or objectively unreasonable, 18203MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS or that the need to advance considerations of com- pensation and deterrence supports an award. Assessing whether attorney’s fees were appropriate under the Lanham Act, the district court held that “[d]efendants have not demonstrated that this is an exceptional case, such that the Court can in its discretion award attorneys’ fees under the Lanham Act.” Forsythe argues that the district court failed to provide suf- ficient justification for its denial of attorney’s fees to satisfy the Requirements of Rule 52(a).23 To comply with Rule 52(a): Statements conclusory in nature are to be eschewed in favor of statements of the preliminary and basic facts on which the district court relied. Otherwise, their findings are useless for appellate purposes. The findings must be explicit enough to give the appel- late court a clear understanding of the basis of the trial court’s decision, and to enable it to determine the ground on which the trial court reached its deci- sion. Unt v. Aerospace Corp., 765 F.2d 1440, 1444 (9th Cir. 1985) (citations omitted). Generally, a district court’s order on attorney’s fees may be set aside if the court fails to state reasons for its decision or applies the incorrect legal standard. See Smith v. CMTA-IAM Pension Trust, 746 F.2d 587, 589 (9th Cir. 1984) (“If the dis- trict court fails to state the reasons for its decision a remand for a statement of reasons may be necessary.”). See also EEOC v. Bruno’s Rest., 13 F.3d 285, 288 (9th Cir. 1993) (“The court’s conclusory finding is not the detailed explana- 23Rule 52(a) requires that the court “shall find the facts specially and state separately its conclusions of law” on motions for attorneys’ fees. See Fed. R. Civ. P. 52(a). 18204 MATTEL INC. v. WALKING MOUNTAIN PRODUCTIONS