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Mattel, Inc. MCA Records


    Citation. Mattel, Inc. v. MCA Records, 296 F.3d 894, 2002 U.S. App. LEXIS 14821, 63 U.S.P.Q.2D (BNA) 1715, 2002 Cal. Daily Op. Service 6617, 2002 Daily Journal DAR 8297 (9th Cir. Cal. July 24, 2002)

    Brief Fact Summary. The music group Aqua recorded a song called Barbie Girl, on an MCA Records-produced (Defendant) album. The manufacturer of the Barbie doll, Mattel, Inc. (Plaintiff), sued for trademark infringement.

    Synopsis of Rule of Law. The parody of a well-known product, where the product has assumed a role in society outside the protections offered under trademark law, is allowed as protected noncommercial free speech under the First Amendment.

    Facts. The Danish band Aqua, signed to the record label MCA Records, Inc. (MCA) (Defendant), produced a song on their Aquarium album entitled Barbie Girl.  The song made it onto some Top 40 music charts.  The song consists of one band member impersonating the doll Barbie in a high-pitched voice, while another band member pretends to be Ken, who asks Barbie to “go party.”  The doll, Barbie, has been a best-seller in the United States for some time and has become an American cultural icon.  Mattel, Inc. (Plaintiff), the maker of the doll Barbie, brought suit for trademark infringement.  The lower court found for MCA (Defendant), and Plaintiff now appeals that ruling—that Barbie Girl is a parody of Barbie and, therefore, is a nominative fair use of the product.  The lower court also ruled that Defendant’s use of the term “Barbie” is not likely to confuse consumers as to Plaintiff’s affiliation with Barbie Girl or dilute the Barbie trademark.

    Issue. Is the parody of a well-known product, where the product has assumed a role in society outside the protections offered under trademark law, allowed as protected noncommercial free speech under the First Amendment?

    Held. (Kozniski, J.)  Yes.  The parody of a well-known product, where the product has assumed a role in society outside the protections offered under trademark law, is allowed as protected noncommercial free speech under the First Amendment.  Trademarks identify a manufacturer or sponsor of a good or service.  For example, some trademarks, such as Rolls Royce or Band-Aid, become so well known that they transcend their original identifying purpose and become a part of society’s collective vocabulary (for instance, asking for a Band-Aid when one has a cut).  At that point, where the product has transcended its original purpose, the trademark assumes “a role outside the bounds of trademark law.”  A likelihood-of-confusion test must then be applied, balancing the trademark owner’s rights with the public’s expressive value interests.  This test ensures that trademark rights do not encroach upon free speech rights protected by the First Amendment.  There is no doubt that the lyrics of Barbie Girl refer to Plaintiff’s Barbie and Ken dolls, making fun of the values that the band believes the Barbie doll represents.  Significantly, the song does not use Barbie, the doll, to make fun of another subject matter, but makes fun of Barbie herself.  The title, Barbie Girl, does not explicitly mislead consumers as to its source because in no way does it suggest that it was produced by Mattel (Plaintiff).  It is, therefore, outside the bounds protected by Plaintiff’s trademark.  Plaintiff further argues that, under the Federal Trademark Dilution Act (FTDA), Barbie Girl dilutes Barbie in two ways: (1) it tarnishes the doll’s image because of the song’s inappropriateness for young girls, and (2) it diminishes Plaintiff’s ability to identify and distinguish its product.  The FTDA is designed to protect the distinctiveness of a trademark.  Under the FTDA, dilution is prevented if the use of a famous product somehow dilutes the distinctive qualify of that famous trademark.  Such use, however, is allowable if it falls under one of three exceptions—comparative ads, news reports and commentary, or noncommercial use.  It is undisputed by MCA (Defendant) that Barbie Girl brings to mind Barbie the doll and that consumers may think of both the song and the doll when they hear the term “Barbie” or perhaps even only of the song.  Clearly, the only viable exception that Barbie Girl may fall under is the “non-commercial use” exception.  The Court’s test for noncommercial use is if the speech has a purpose beyond a commercial transaction.  In this case, Barbie Girl is not “purely commercial speech.”  While MCA (Defendant) does use Barbie the doll to sell the song, the song also parodies Barbie and humorously comments on the values that Aqua sees Barbie as representing.  Barbie Girl has a meaning and function beyond a strictly commercial use only and is, therefore, protected noncommercial speech under the FTDA.  Affirmed.

    Discussion. Courts have long made exceptions for parody in trademark law.  Not only is parody protected under the First Amendment, the exception is also a “common sense” recognition to how society functions and entertains itself—parody occurs regularly, and to deny it as an exception would limit how people communicate with one another.


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