Intellectual Property
Jul. 26, 2002
Parody of Barbie Passes 9th Circuit Test
SAN FRANCISCO - Mattel Inc.'s trademark challenge to a Danish band's parody of the American cultural icon, the Barbie doll, came to nothing Wednesday as a federal appeals court threw out the toymaker's trademark suit against the band's music distributors and told both sides "to chill."
"If this were a sci-fi melodrama, it might be called SpeechZilla meets Trademark Kong," wrote Judge Alex Kozinski of the 9th U.S. Circuit Court of Appeals, using his own example of borrowing from trademark images for free speech purposes in Mattel Inc. v. MCA Records Inc., 2002 DJDAR 8297.
The use of a trademark name in a literary title, such as Aqua's song "Barbie Girl," does not violate the Lanham Act unless the title has no artistic relevance and explicitly misleads consumers about the source of the work, the unanimous panel held.
Aqua, a Danish quartet, hit the American Top 10 with its 1997 song, "Barbie Girl," a parody that ridiculed the famous doll with such lyrics as, "I'm a blonde bimbo girl, in a fantasy world, Dress me up, make it tight, I'm your dolly."
Mattel, which manufactures the doll, charged the song title was a trademark violation and diluted the value of its product. Mattel also publicly criticized MCA Records and Universal Music International's defense that each album included a disclaimer that the song was simply "social commentary [that was] not created or approved by the makers of the doll."
A Mattel representative said that's "akin to a bank robber handing a note of apology to a teller during a heist. [It] neither diminishes the severity of the crime nor does it make it legal."
MCA, which was locked in its own full- scale war with Napster, the Internet music-swapping service, over alleged piracy of copyrighted music, did not take kindly to the use of the words "bank robber," "heist" or "crime" and sued for defamation.
In context, all of that name-calling is "nonactionable rhetorical hyperbole," Kozinski wrote. He concluded, "The parties are advised to chill."
The court adopted a decision of the New York-based 2nd Circuit in holding that the Lanham Act should only be applied to artistic works when the public interest in avoiding consumer confusion outweighs the public interest in free expression, Rogers v. Grimaldi, 875 F.2d 994 (1989).
"A title is designed to catch the eye and to promote the value of the underlying work," Kozinski wrote. "Consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer."
"Upon hearing Janis Joplin croon, 'Oh Lord, won't you buy me a Mercedes-Benz?'" one would not suspect "that she and the carmaker had entered into a joint venture," he said.
Kozinski was joined by Judges Dorothy Nelson and Melvin Brunetti.
In the Aqua song, Lene Grawford Nystrom plays the role of Barbie and band member Rene Dif takes on the part of her longtime romantic interest, Ken.
Mattel called the lyrics "an outrage" in public statements in 1997 and suggested the song portrays young women as sex objects.
Mattel attorney Adrian M. Pruetz of Quinn Emanuel Urquhart Oliver & Hedges was not taking media calls Wednesday and MCA Records attorney Russell J. Frackman, of Mitchell Silberberg & Knupp, did not return calls for comment.
The original form of the Barbie was created in Germany in the 1950s as an adult collector's item that resembled a "German street walker," according to Kozinski. Mattel transformed the doll into a glamorous, long-legged blonde.
She has been characterized as both the ideal American woman and as a bimbo, he wrote.
"With Barbie, Mattel created not just a toy but a cultural icon. With fame often comes unwanted attention," he said.
Kozinski said the song does not explicitly mislead consumers about the source of the work or suggest Mattel was involved. So, with no chance of confusion, the court upheld the summary judgment dismissing the case issued by U.S. District Judge Matt Byrne.
The appeals court did not rule on Byrne's reasoning that the song was also "fair use," although the opinion suggested in a footnote that claim would probably work as well.
Pamela Mac Lean
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