In International Falls, Minnesota, agents with Customs and Border Protection seized nearly 22,000 counterfeit Barbie dolls worth almost $140,000 from a railcar. These dolls were imported by the parent company of Dollar Tree, Greenbrief International and were intended to be sold in Dollar Tree’s more than 15,000 stores operated in 48 states and five Canadian provinces. Dollar Tree is a Fortune 200 company that operates under the names Dollar Tree, Family Dollar, and Dollar TreeCanada. The fashion dolls were found in a shipping container aboard a Canadian National Railway train during an inspection at the Minnesota-Canada border. On the rail car’s manifest, “Other Toys” was simply written.
Upon showing Mattel, who is the owner of all copyrights and trademarks in and to Barbie, photographs of the seized toys, Mattel confirmed that the fashion dolls bore copyright protected markings of its “CEO Barbie” and that violate intellectual property laws. In particular, Mattel identified several features of the copyrighted Barbie head sculpt infringed by the fashion dolls. More specifically, the shape of the mouth and particularly the upturned upper lip and dimples at the corner thereof, and the nose, including the shape and proportions of the nostrils, were infringed by the imported dolls. To make matters worse, Mattel claims that the packaging of the fake fashion dolls violated Mattel’s trademark protections.
Copyright protects original works of authorship fixed in any tangible medium of expression, including sculptural works, which is how toys are classified. Even to the extent that a toy may feature individual components which are unoriginal and unprotectable by themselves, copyright does protect original compilations of unoriginal components. To prove copyright infringement, the claimant must show a valid copyright interest and that the accused engaged in the unauthorized reproduction, distribution, performance, or public display thereof.
The federal authorities have released a statement explaining that they seek to forfeit and recover the approximately 22,000 fashion dolls that infringe the registered copyright owned by Mattel. Civil forfeiture is a law enforcement tool that allows the government to protect its income from violation of customs and revenue laws. Relevantly, copyright law provides for the seizure of material violating a registered copyright.
This is not the first time Dollar Tree has imported dolls that federal authorities considered to be counterfeit, but rather, this is the second time they got caught. Indeed, in 2016, prosecutors made a similar seizure at the same port of entry of more than 13,000 counterfeit fashion doll mermaids. The mermaids were also found to have head sculpt that infringed on copyright and trademark protections afforded real Barbie dolls. In both instances, the counterfeit dolls originated from the same exporter/shipper located in Hong Kong.
If found guilty by federal authorities, pursuant to federal statute, Dollar Tree could be fined up to $5 million. Moreover, since this is the importer’s second offense, Dollar Tree’s liability could be increased up to $15 million. However, the civil forfeiture suit seeks only forfeiture of the 21,852 dolls and “costs and disbursements in this action, and for such other and further relief as this court deems proper and just.”