"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."
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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