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10/2/2002
Free Speech Trumps Mattel's Trademark Right in Plastic Doll
Los Angeles Daily Journal
Barbie is no simple doll. She has become a cultural icon, loved for her Malibu lifestyle and lampooned for her "Material Girl" values. But when does lampooning Barbie infringe the trademark to her name?
The 9th U.S. Circuit Court of Appeals recently answered this question in Mattel Inc.'s lawsuit over the song "Barbie Girl," a Top 40 hit that pokes fun at Barbie and her plastic life. Mattel Inc. v. MCA Records Inc., 2002 DJDAR 8297 (9th Cir. July 25, 2002). In a victory for the First Amendment, the court found that the public interest in free expression outweighs Mattel's trademark rights. It affirmed the District Court's ruling that "Barbie Girl" neither infringed nor diluted the Barbie mark.
While in the house of Barbie, the 9th Circuit confronted two new legal issues. First, it appeared to fashion a different test for trademark infringement claims involving marks that have become part of the public vocabulary. Second, it resolved a statutory conundrum in the Federal Trademark Dilution Act over the "noncommercial use" exception.
In 1997, the Danish band Aqua exploded onto the music scene with MCA Records' release of its "Barbie Girl" single and related album. In the song, one band member impersonates Barbie with a high-pitched, doll-like voice.
The lyrics poke fun at Barbie and the values that Aqua claims Barbie represents: "Life in plastic, it's fantastic. You can brush my hair, undress me everywhere/Imagination, life is your creation," and "I'm a blond bimbo girl, in a fantasy world/Dress me up, make it tight, I'm your dolly." Mattel was not pleased and sued for trademark infringement and dilution.
The 9th Circuit disposed of the trademark infringement claim but not with its traditional "likelihood of confusion" test. That test evaluates the likelihood that an accused mark confuses consumers into believing there is an association with the producer of the original trademark. Generally, it strikes a good balance between trademark interests and the public's right to freely use words.
But what happens when a trademark is so popular that it enters the public vocabulary? As the 9th Circuit asked, how else does one call something the "Rolls Royce of its class" or refer to a quick fix as a "Band-Aid"? Can a trademark owner limit the public's ability to use such marks in discourse? The 9th Circuit answered that public expressive interests should outweigh trademark rights. But the court felt that the "likelihood of confusion" test does not fully protect First Amendment interests in those cases.
So it looked to Ginger Rogers and her trademark infringement suit against the makers of a film named "Ginger and Fred," a tale of cabaret performers who imitated Rogers and Fred Astaire. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
Rogers would have fared better if someone had sold products, such as dancing shoes, named after her, because the 2nd Circuit treated the title of an artistic work differently from a "traditional" mark identifying the source of a product. In dismissing Rogers' claim, it found that the Lanham Act should apply to artistic works "only where the public interest in avoiding consumer confusion outweighs the public interest in free expression."
The Rogers court derived a test for titles of literary works. A title does not violate the Lanham Act unless it has no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work.
The 9th Circuit adopted the Rogers test and applied it to "Barbie Girl." Under the first prong, the court determined that the word "Barbie" in the song title clearly has artistic relevance to the underlying song. The title tells consumers what to expect in the song - a song about Barbie, or a girl like Barbie, and the values that Barbie supposedly represents.
The court observed that consumers would not expect the "Barbie Girl" title to identify Mattel as the source of the song.
Another significant factor was the song's use of "Barbie" to poke fun at Barbie herself rather than to parody another subject. That distinguished the case from Dr. Seuss Enters, L.P. v. Penguin Books USA Inc., 109 F.3d 1394 (9th Cir. 1997). In Dr. Seuss, an author borrowed the Dr. Seuss marks and lyrics for his book, "The Cat NOT in the Hat!" The author's purpose was to get attention for his book, not to make fun of Dr. Seuss. That kind of use is not protected speech.
Instead, "Barbie Girl" targeted Barbie for social commentary. Thus, the 9th Circuit found no trademark infringement.
Mattel brought a second claim under the Federal Trademark Dilution Act, 15 U.S.C. Section 1125, arguing that "Barbie Girl" diminished Barbie's capacity to identify and distinguish Mattel's products and tarnished the mark because the song is inappropriate for young girls. Again, the 9th Circuit disagreed.
Trademark dilution occurs when a mark loses its uniqueness or is tarnished when it is used by infringers to identify different, unauthorized products. Mattel easily met the elements for trademark dilution: The Barbie mark is famous; MCA used Barbie for a commercial purpose in commerce by selling the "Barbie Girl" single and related album; and use of the Barbie mark is dilutive.
On the last element, MCA did not dispute that, after "Barbie Girl" became popular, consumers hearing Barbie's name might think of both the doll and the song or just the song.
But the Federal Trademark Dilution Act contains three statutory exemptions. One of them, for "noncommercial use," saved "Barbie Girl." (The two other exemptions - for comparative advertising and for news reporting and commentary - did not apply.)
The 9th Circuit faced a statutory conundrum in the act. For dilution to occur, the statute requires a "commercial use in commerce" of the mark. Yet there is an express exemption for "noncommercial use." If "commercial use" has the same meaning in both provisions, that would eliminate one of the statutory exemptions because any use found to be dilutive could not, by definition, be noncommercial.
The 9th Circuit feared that this inconsistency would create a constitutional problem because it would leave the act without enough First Amendment protection for dilutive speech.
To resolve the problem, the 9th Circuit looked to legislative history and "Tootsie." The act's history confirms that the "noncommercial use" exemption incorporated the concept of "commercial speech" from the First Amendment arena.
To determine whether "Barbie Girl" fell within the exemption, the 9th Circuit looked to its definition of "commercial speech" in First Amendment case law and to its decision in actor Dustin Hoffman's lawsuit against a magazine for publishing a digitally altered image of his "Tootsie" film character. Hoffman v. Capital Cities/ABC Inc., 255 F.3d 1180 (9th Cir. 2001).
In Hoffman, the 9th Circuit defined commercial speech as that which does "no more than propose a commercial transaction"; speech that does something else besides proposing a commercial transaction (such as parody, satire or editorial comment) is not "purely commercial" and is entitled to full First Amendment protection.
The 9th Circuit applied its "Tootsie" holding to Barbie. While MCA used Barbie's name to sell copies of "Barbie Girl," a commercial purpose, the court found that the song's parody of the Barbie image and its social commentary is protected speech. Therefore, the song falls within the "noncommercial use" exemption, and there is no trademark dilution.
The battle over Barbie provides an important lesson: It is lawful to use trademarks, especially those in the public vernacular, for expressive speech purposes. For any creator of artistic works, the practical ramification is clear: If an artist wants to use someone's trademark for an artistic work, make sure it is used for a protected purpose, such as parody, not just to draw attention to the artist.
But the Barbie decision leaves a few things unclear. Although the 9th Circuit adopted the Rogers test, that test was meant to evaluate whether the title of a literary work infringes a trademark. It is uncertain whether the court intended the test to be used for all trademarks that have become part of the public vocabulary. Nor does the decision draw a bright line between commercial and noncommercial speech, a line that invariably will remain fuzzy.
In the end, things became a bit messy in the house of Barbie when the litigants traded barbs with each other in the press. MCA countersued for defamation based on Mattel's media comments analogizing MCA to a "bank robber" committing a "heist." The 9th Circuit dismissed this as rhetorical hyperbole and ended its opinion with advice for the litigants: "The parties are advised to chill."
Sound advice for the houses of "Barbie Girl" and Barbie.
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