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Mattel, Inc. v. MCA Records

United States Court of Appeals, Ninth Circuit
296 F.3d 894 (2002)
ELI5:

Rule of Law:

The use of a trademark in the title of an artistic work does not constitute trademark infringement unless the title has no artistic relevance to the underlying work or is explicitly misleading as to its source. Furthermore, a parodic work that uses a famous trademark is protected from dilution claims under the Federal Trademark Dilution Act's 'noncommercial use' exemption, even if the work is sold for profit.


Facts:

  • Mattel, Inc. is the creator and marketer of the Barbie doll, a globally recognized toy and cultural icon.
  • In 1997, the Danish band Aqua released a song titled 'Barbie Girl' on their album 'Aquarium'.
  • MCA Records, Inc. and its affiliates produced, marketed, and sold the 'Barbie Girl' song and album.
  • The song features vocalists impersonating the dolls Barbie and Ken.
  • The lyrics of the song parody the Barbie doll and the lifestyle she represents, with lines such as 'I'm a blonde bimbo girl, in a fantasy world' and 'Life in plastic, it's fantastic'.
  • The song became a commercial success, selling well and appearing on Top 40 music charts.
  • During the dispute, a Mattel representative publicly described MCA's actions with terms like 'bank robber,' 'heist,' 'crime,' and 'theft'.

Procedural Posture:

  • Mattel, Inc. filed a lawsuit against MCA Records, Inc. and its affiliates in the U.S. District Court, alleging federal trademark infringement and dilution, among other claims.
  • MCA Records filed a counterclaim against Mattel for defamation.
  • The district court granted MCA's motion for summary judgment on Mattel's trademark infringement and dilution claims.
  • The district court also granted Mattel's motion for summary judgment on MCA's defamation counterclaim.
  • Mattel appealed the summary judgment ruling on its trademark claims to the U.S. Court of Appeals for the Ninth Circuit.
  • MCA cross-appealed the summary judgment ruling on its defamation claim.

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Issue:

Does the use of the 'Barbie' trademark in the title and lyrics of a satirical song constitute trademark infringement or dilution under the Lanham Act?


Opinions:

Majority - Judge Kozinski

No, the use of the 'Barbie' trademark in the title and lyrics of a satirical song does not constitute trademark infringement or dilution under the Lanham Act. For trademark infringement, the court adopts the Second Circuit's test from Rogers v. Grimaldi, holding that an artistic work's title does not violate the Lanham Act unless it has (1) no artistic relevance to the underlying work, or (2) is explicitly misleading as to the source or content of the work. Here, the title 'Barbie Girl' is clearly relevant to the song's subject matter, which is a parody of Barbie. The title does not explicitly mislead consumers into believing Mattel produced the song, as consumers do not typically expect an artistic title to identify the work's producer. For the dilution claim, while the song's use of 'Barbie' may cause blurring, it is protected by the Federal Trademark Dilution Act's (FTDA) exemption for 'noncommercial use.' The court interprets 'noncommercial use' not as a use devoid of profit, but as speech that is not 'purely commercial' and does more than propose a transaction. Because the song is a parody containing expressive social commentary and humor, it is considered fully protected speech under the First Amendment and thus falls within the FTDA's exemption. Finally, the court dismissed MCA's defamation counterclaim, finding Mattel's use of terms like 'theft' and 'bank robber' to be non-actionable rhetorical hyperbole common in intellectual property disputes.



Analysis:

This decision significantly clarifies the boundary between trademark protection and First Amendment rights for artistic and expressive works. By formally adopting the Rogers test in the Ninth Circuit, the court established a high bar for trademark holders to succeed in infringement claims against titles of artistic works, protecting creators of parodies, satires, and commentaries. The court's broad interpretation of the FTDA's 'noncommercial use' exemption is particularly impactful, as it shields expressive works from dilution claims even when they are commercially successful. This precedent provides crucial 'breathing room' for artists and satirists, ensuring that trademark law does not become a tool to suppress critical or humorous commentary on cultural icons.

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