image: MAC cosmetics

image: MAC cosmetics

MAC cosmetics launched a nostalgic collaboration collection this summer, a Troll Doll-themed one, which coincides with the release of a Trolls movie. Interestingly, both the film and the MAC collection come several years after a handful of lawsuits in connection with the popular 1990’s toys.

As you may not know, the troll doll, which at least one court has described as “ugly but somehow endearing … with oversized heads, big grins, pot bellies, and frizzy hair,” was created by Thomas Dam, a Danish woodworker and fisherman, in the 1950’s. In 1962, he began selling them in the U.S. through his company, Dam Things Establishment. While Dam enjoyed copyright protection for the dolls in Denmark, he encountered issues upon expanding into the U.S. market. In particular, he registered the design with the U.S. Copyright Office in 1965, but because the dolls had been sold in the U.S. before the copyright was issued, the design was deemed to be in the public domain in the U.S., making the copyright invalid and the design free for all to use.

In 1994, however, Congress enacted the Uruguay Round Amendment Act (URAA), which amended U.S. copyright law, aligning it more closely with the requirements set forth by the Berne Convention, an international copyright treaty to which both Denmark and the U.S. are parties. The effect: the copyrights for many foreign works that had been declared to be in the public domain were restored in the U.S., including that for the troll doll, which received restored copyright registration status in 1996.

THE LAWSUITS

With the background out of the way, a number of lawsuits followed the restoration of the troll doll copyright in the U.S.

Wal-Mart and Uneeda Doll

One of the first suits filed by Troll Company (a subsidiary of Dam’s original Dam Things company) stems from a deal between Dam and a New York-based doll company, Uneeda Doll. The two parties entered into a licensing agreement in 1964 under which Uneeda Doll would make and sell a line of troll dolls under the name Wish-niks. It did so until about 1984, after which the right to sell the dolls was granted to Troll Company.

Shortly after the restoration of the troll doll copyright and just as Troll Company was planning to relaunch the dolls in the U.S., it learned that Uneeda was planning to sell its Wish-nik trolls to Wal-Mart and in 1996, filed suit against the doll company. The Uneeda Doll Company, which has made millions of dollars manufacturing the troll dolls in the U.S., challenged the restoration. But the courts sided with Troll Company. The lower court prohibited Uneeda from manufacturing, distributing, or selling “Wish-nik” troll dolls, a decision that was upheld by the U.S. Court of Appeals for the Second Circuit – a federal court of appeals in New York – in 2002.

Urban Outfitters

Several years later, in 2008, Troll Company took on Urban Outfitters, filing a copyright infringement suit against the Philadelphia-based hipster retailer in the Southern District of New York, a federal court in Manhattan. In its suit, Troll Co. claimed that “it holds the exclusive rights to produce and sell troll dolls with happy facial expressions and crazy hair in this country.” It further alleged that Urban Outfitters (and others) infringed its copyright by selling lookalike dolls – called Turf Trolls – in its stores. In addition to seeking that the defendant retailers cease all manufacturing and sales of the trolls, Troll Co. also sought monetary compensation from a list of retailers selling the offending trolls.

The parties ultimately settled the lawsuit out of court, but not before Urban Outfitters pulled the allegedly infringing dolls from its website and brick-and-mortar stores.

DIC Entertainment

And in the meantime, Troll Company was engaged in one the messiest of its many lawsuits. DIC Entertainment, a self-proclaimed “leading entertainment and global brand management company,” filed a $20 million lawsuit against Troll Company in federal court in Los Angeles in 2007. DIC alleged claims of fraud in the inducement and negligent misrepresentation in connection with two TC brands that DIC licensed from Troll Company: (1) the “Good Luck Troll,” a 1950s-era troll doll created in Denmark and (2) the “Trollz,” a modernized version of the Good Luck Troll that was created by DIC in 2003.

In particular, DIC held that prior to entering into the licensing agreements with Troll Company, it expressed concern about the sale of counterfeit troll dolls and other infringing products, since such copycat products threatened to undermine the value of the both the Classic Trolls and the impending Trollz. In response, DIC alleges, that Troll Company repeatedly assured DIC that it had been vigilant in stamping out any counterfeits and other infringing products, which DIC alleges was a lie.

To this, Troll Company filed a counter lawsuit, claiming that DIC materially misrepresented its ability to create and market a modern troll doll toy campaign and destroyed the image and goodwill of the doll. According to that claim, DIC Entertainment fraudulently obtained licensing rights to the troll doll by hiding its true financial condition and then conducted such a “disastrously underfunded roll-out” that transformed the troll doll from a “multi-billion dollar renowned property” into one that was almost completely unmarketable.

According to Troll Co.’s complaint, while continuing to pursue the original troll doll project, DIC convinced Troll Company to give it the rights to create a derivative property called, Trollz, which DIC said would involve a cutting-edge website, television series and merchandising that would maximize the eventual commercial exploitation of the original troll doll. The problem, however, according to Troll Company, was that DIC’s real intention was “to devote its limited resources to the marketing of the derivative Trollz property, which DIC owned. As for the original troll project, DIC’s main interest was not for a source of revenue for either itself or Troll Company, but rather to eliminate a potentially competing ‘troll’ property from the marketplace and thus give DIC’s Trollz a clear field.”

With all of this in mind, MAC’s 22-piece collection, which consists of lipsticks, lip glosses, eyeshadows, powders, pigments, glitters, and a brush with its tuft of fibers dip-dyed hot pink, hit the web and stores in August.