Thursday, August 20, 2009

Aqua - Barbie Girl



"The First Amendment may offer little protection for a 

competitor who labels its commercial good with a confusingly 

similar mark, but “[t]rademark rights do not entitle the owner 

to quash an unauthorized use of the mark by another who is 

communicating ideas or expressing points of view.” L.L. 

Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 

1987). Were we to ignore the expressive value that some 

marks assume, trademark rights would grow to encroach upon 

the zone protected by the First Amendment. See Yankee 

Publ’g, Inc. v. News Am. Publ’g, Inc., 809 F. Supp. 267, 276 

(S.D.N.Y. 1992)."


"There is no doubt that MCA uses Mattel’s mark: Bar- 

bie is one half of Barbie Girl. But Barbie Girl is the title of 

a song about Barbie and Ken, a reference that—at least today 

—can only be to Mattel’s famous couple. We expect a title to 

describe the underlying work, not to identify the producer, 

and Barbie Girl does just that."


"The Second Circuit has held that “in general the [Lan- 

ham] Act should be construed to apply to artistic works only 

where the public interest in avoiding consumer confusion out- 

weighs the public interest in free expression.” Rogers v. Gri- 

maldi, 875 F.2d 994, 999 (2d Cir. 1989); see also Cliffs Notes, 

886 F.2d at 494 (quoting Rogers, 875 F.2d at 999)."



"Applying Rogers to our case, we conclude that MCA’s 

use of Barbie is not an infringement of Mattel’s trademark. 

Under the first prong of Rogers, the use of Barbie in the song 

title clearly is relevant to the underlying work, namely, the 

song itself. As noted, the song is about Barbie and the values

Aqua claims she represents. The song title does not explicitly 

mislead as to the source of the work; it does not, explicitly or 

otherwise, suggest that it was produced by Mattel. The only 

indication that Mattel might be associated with the song is the 

use of Barbie in the title; if this were enough to satisfy this 

prong of the Rogers test, it would render Rogers a nullity. We 

therefore agree with the district court that MCA was entitled 

to summary judgment on this ground. We need not consider 

whether the district court was correct in holding that MCA 

was also entitled to summary judgment because its use of Bar-bie was a nominative fair use."

"Mattel separately argues that, under the Federal Trademark 

Dilution Act (“FTDA”), MCA’s song dilutes the Barbie mark 

in two ways: It diminishes the mark’s capacity to identify and 

distinguish Mattel products, and tarnishes the mark because 

the song is inappropriate for young girls. See 15 U.S.C. 

§ 1125(c); see also Panavision Int’l, L.P. v. Toeppen, 141 

F.3d 1316, 1324 (9th Cir. 1998). 

“Dilution” refers to the “whittling away of the value of a 

trademark” when it’s used to identify different products. 4 J. 

Thomas McCarthy, McCarthy on Trademarks and Unfair 

Competition § 24.67 at 24-120; § 24.70 at 24-122 (2001). For 

example, Tylenol snowboards, Netscape sex shops and Harry 

Potter dry cleaners would all weaken the “commercial magne- 

tism” of these marks and diminish their ability to evoke their 

original associations. Ralph S. Brown, Jr., Advertising and the 

Public Interest: Legal Protection of Trade Symbols, 57 Yale 

L.J. 1165, 1187 (1948), reprinted in 108 Yale L.J. 1619 

(1999). These uses dilute the selling power of these trade- 

marks by blurring their “uniqueness and singularity,” Frank I. 

Schechter, The Rational Basis of Trademark Protection, 40 

Harv. L. Rev. 813, 831 (1927), and/or by tarnishing them with 

negative associations."


"MCA’s use of the mark is dilutive. MCA does not dispute 

that, while a reference to Barbie would previously have 

brought to mind only Mattel’s doll, after the song’s popular 

success, some consumers hearing Barbie’s name will think of 

both the doll and the song, or perhaps of the song only. This 

is a classic blurring injury and is in no way diminished by the 

fact that the song itself refers back to Barbie the doll. To be 

dilutive, use of the mark need not bring to mind the junior 

user alone. The distinctiveness of the mark is diminished if 

the mark no longer brings to mind the senior user alone."


"A “noncommercial use” exemption, on its face, presents a 

bit of a conundrum because it seems at odds with the earlier 

requirement that the junior use be a “commercial use in com- 

merce.” If a use has to be commercial in order to be dilutive, 

how then can it also be noncommercial so as to satisfy the 

exception of section 1125(c)(4)(B)? If the term “commercial 

use” had the same meaning in both provisions, this would 

eliminate one of the three statutory exemptions defined by 

this subsection, because any use found to be dilutive would, 

of necessity, not be noncommercial."


"Fortunately, the legislative history of the FTDA suggests an 

interpretation of the “noncommercial use” exemption that 

both solves our interpretive dilemma and diminishes some 

First Amendment concerns: “Noncommercial use” refers to a 

use that consists entirely of noncommercial, or fully constitu- 

tionally protected, speech. See 2 Jerome Gilson et al., Trade- 

mark Protection and Practice § 5.12[1][c][vi] at 5-240 (this 

exemption “is intended to prevent the courts from enjoining 

speech that has been recognized to be [fully] constitutionally 

protected,” “such as parodies”). Where, as here, a statute’s 

plain meaning “produces an absurd, and perhaps unconstitu- 

tional, result[, it is] entirely appropriate to consult all public 

materials, including the background of [the statute] and the 

legislative history of its adoption.” Green v. Bock Laundry 

Mach. Co., 490 U.S. 504, 527 (1989) (Scalia, J., concurring)."


"Barbie Girl is not purely commercial 

speech, and is therefore fully protected. To be sure, MCA 

used Barbie’s name to sell copies of the song. However, as 

we’ve already observed, see pp. 10489-90 supra, the song 

also lampoons the Barbie image and comments humorously 

on the cultural values Aqua claims she represents. Use of the 

Barbie mark in the song Barbie Girl therefore falls within the 

noncommercial use exemption to the FTDA. For precisely the 

same reasons, use of the mark in the song’s title is also 

exempted."



Mattel, Inc. v. MCA Records, Inc. (2002)



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